Ex Parte Turner et al

Board of Patent Appeals and Interferences

Apr 30, 2009

10007899 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte OLAF TURNER, DIRK ROSENAU, and TORSTEN SCHLAAFF
____________
Appeal 2008-3094 1
Application 10/007,899
Technology Center 2100
____________
Decided:2 April 30, 2009
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and STEPHEN
C. SIU, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed November 5, 2001. The real party in interest is Francotyp-Postalia
GmbH, a German Corporation, as successor to Francotyp-Postalia AG & Co.
KG.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 through 3 and 5 through 14. The Examiner indicates that claim 4
would be allowable if rewritten in independent form to include the limitation
of the base claim and any intervening claims. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
Brief Summary of the Invention
Appellants invented a postage meter machine, encased by a security
barrier that allows replenishing of battery capacity with minimal outlay and
maximum protection against manipulation. (Spec. 4.) In particular, Figure 1
depicts the postage security device having a security region (10) and a non-
security region (14). (Spec. 6, ll. 5-6.) A first battery (134) is located in the
security region (10) to ensure emergency power supply. (Spec. 6, ll. 6-8.) A
second replaceable battery (140) is located in the non-security region (14) to
serve as an auxiliary power supply. (Spec. 6, ll. 8-11.) Further, a
monitoring unit (21) monitors voltage information relating to the second
replaceable battery (140) and activates the battery switchover device (18).
(Spec. 4, ll. 4-15.) Depending on the voltage information gathered by the
monitoring unit (21), the battery switchover device (18) activates and
channels power from the second battery (14) to the security components
located in the security region (10). (Spec. 4, ll. 15-16.) Consequently, the
second battery (140) lengthens the service life of the first battery (134),
thereby significantly increasing the service life of the postage security
device. (Spec. 4, l. 16, through spec. 5, l. 2.) Since the second replaceable
battery (140) is located in the non-security region (14), it relieves the user
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from having to access the security region (10) to replace the first battery
(134). (Spec. 5, ll. 3-4.)

Illustrative Claim
Independent Claim 1 further illustrates the invention. It reads as
follows:
1. An electronic device comprising:

a security region containing a plurality of security components, said
security region being surrounded by a mechanical security barrier to
normally preclude physical access to said security components;

a power source adapted for connection to a mains voltage for
normally supplying power to said security components;

a first battery disposed in said security region with physical access to
said first battery also being normally precluded in said security barrier;

a second battery disposed outside of said security region for supplying
power to said security components upon an outage of said mains voltage;

a battery switchover device having a first input connected to said first
battery and a second input connected to said second battery for switching
power supply to said security components from said second battery to said
first battery only if power from said second battery is absent; and

a monitoring unit disposed in said security region and connected to
said battery switchover device for evaluating voltage information associated
with at least one of a voltage of said first battery and a voltage of said
second battery.

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Naclerio WO 99/48055 Sept. 23, 1999
Yoshimura US 5,650,974 Jul. 22, 1997
Wiley et al. (“Wiley”) US 6,073,085 Jun. 6, 2000
Fang et al. (“Fang”) US 5,128,552 Jul. 7, 1992

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 5-11, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Naclerio and Yoshimura.
2. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Naclerio, Yoshimura, and Wiley.
3. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Naclerio, Yoshimura, and Fang.
Appellants’ Contentions
1. Appellants contend that the Examiner erred in finding that the
combination of Naclerio and Yoshimura renders independent claim 1
unpatentable. In particular, Appellants argue that there is no basis for a
person of ordinary skill in the art seeking to address the same problem as
Appellants’ to consult Yoshimura. (App. Br. 5-10.)
2. Appellants contend that the Examiner erred in finding that the
combination of Naclerio, Yoshimura, and Wiley renders dependent claims 2
and 3 unpatentable. In particular, Appellants argue that there is insufficient
rationale to combine Naclerio, Yoshimura, and Wiley. (Id. at 12-13.)
3. Appellants contend that the Examiner erred in finding that the
combination of Naclerio, Yoshimura, and Fang renders dependent claims 12
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and 13 unpatentable. In particular, Appellants argue that Fang does not
provide a rationale to monitor voltage to determine if and when an
unperformed need exists to replace a second battery. (Id. at 13-14.)

Examiner’s Findings and Conclusions
1. The Examiner avers that the combination of Naclerio and
Yoshimura renders independent claim 1 unpatentable. In particular, the
Examiner finds that Naclerio’s disclosure of a tamper-resistant postal
security device addresses the same problem as Appellants’ because it
prevents internal manipulation of the device. (Ans. 10.) Further, the
Examiner finds that Yoshimura’s disclosure of using a second external
battery to extend the life of a first internal battery addresses the same
problem as Appellants’ because it lengthens the service life of the first
battery. (Id. at 11.)
2. The Examiner concludes that the combination of Naclerio,
Yoshimura, and Wiley renders dependent claims 2 and 3 unpatentable. In
particular, the Examiner finds that the rationale to combine Naclerio,
Yoshimura, and Wiley is explicit in Wiley. (Id. at 13.)
3. The Examiner concludes that the combination of Naclerio,
Yoshimura, and Fang renders dependent claims 12 and 13 unpatentable. In
particular, the Examiner finds that the teachings of Fang would have
suggested to an ordinary skilled artisan that power can be conserved by
monitoring a second replaceable battery and altering the power of operating
components accordingly. (Id. at 14.)

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II. ISSUE
1. Have Appellants shown that the Examiner erred in concluding
that an ordinary skilled artisan would have found sufficient rationale to
combine the disclosures Naclerio and Yoshimura to teach a first battery in a
security region and a second battery in a non-security region, as recited in
claim 1.
2, Have Appellants shown that the Examiner erred in concluding
that an ordinary skilled artisan would have found sufficient rationale to
combine the disclosures of Naclerio, Yoshimura, and Wiley to render
dependent claims 2 and 3 unpatentable?
3. Have Appellants shown that the Examiner erred in concluding
that an ordinary skilled artisan would have found sufficient rationale to
combine the disclosures of Naclerio, Yoshimura, and Fang to render
dependent claims 12 and 13 unpatentable?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants’ Invention
1. As depicted in Figure 4, the electronic device, such as a mail
processing unit, a postage meter machine, or a computer, has a security
region (100) and a non-security region (14). (Spec. 6, ll. 5-6.)
2. The first battery (134) is located in the security region (100) of
the electronic device and is not accessible to the user. (Spec. 6, l. 24 through
spec. 7, l. 1.)
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3. The second battery (140) is positioned in the non-security
region (14), preferably in an external accessible battery compartment.
(Spec. 10, ll. 11-13.)
4. The second battery (140) lengthens the life of the first battery
(134), thereby increasing the service life of the electronic device. (Spec. 4, l.
23 through spec. 5, l. 2.)
5. The stored data within the security region (100) is protected
against manipulation because the second replaceable battery (140) is located
in an accessible battery compartment. (Spec. 5, ll. 3-4.)
Naclerio
6. Naclerio discloses a postal security device (“PSD”) that is used
for printing “encrypted indicia” postage. (1, ll. 24-25.) The PSD has a
secure housing that contains the accounting registers and cryptographic
engine. (1, ll. 25-26.)
7. As illustrated in Figure 1, the large Random Access Memory
(“RAM”) (16) and other active components contained within the PSD (10)
receive external power (21). (5, ll. 3-4.)
8. The smaller RAM (14) contained within the PSD (10) is
capable of receiving power from a backup battery (15). (5, ll. 4-5.)
9. The PSD design protects the many important items of data
stored within while utilizing minimal battery power. (4, ll. 1-3.)
Yoshimura
10. As illustrated in Figure 1, Yoshimura discloses an easily
manufactured, compact, and economically practical portable-type
semiconductor memory device containing a main battery (BAT 1) and
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auxiliary battery (BAT 2) that prevents data loss when the power from a host
apparatus is cut off. (Col. 5, ll. 43-55.)
11. The portable-type semiconductor memory device contains a
replaceable first battery (BAT 1) that is typically used as the main battery
and a second battery (BAT 2) that backs up the memory (3) during
replacement of the first battery (BAT 1). (Col. 2, ll. 20-24; col. 8, ll. 45-63.)
12. The portable-type semiconductor memory device contains a
switching block (13) that cooperates with switches SW3, SW4, and SW5 to
switch between allowing the second battery (BAT 2) to be charged and
allowing the second battery (BAT 2) to back up the memory (3) during
replacement of the first battery (BAT 1). (Col. 9, l. 59, through col. 10, l.
15.)
13. A sensing block (11) monitors the presence of the first battery
(BAT 1) as the main battery. (Col. 9, ll. 50-52.) When the first battery
(BAT 1) is pulled out for replacement, the sensing block (11) output signals
accordingly. (Col. 9, ll. 52-57.)
Wiley et al.
14. As illustrated in Figure 1A, Wiley discloses a portable
electronic unit (50) that contains an analog-to-digital (“A/D”) converter
(115) that receives and digitizes analog signals from various components
and inputs them to the main CPU (111). (Col. 5, ll. 18-22.)
15. The A/D converter (115) works in conjunction with the battery
voltage/charging circuit (131) to monitor the voltage of batteries A and B.
(Col. 5, ll. 22-29.)
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16. The portable electronic unit (50) contains a visual display
(117), such as a flat liquid crystal display panel, and a display processor
(116) coupled to a CPU (111). (Col. 5, ll. 40-54.)
17. Simple and quick executable self-tests are performed on the
electronic device to insure that the equipment is functioning properly and
reliable for its intended use. (Col. 1, l. 35, through col. 2, l. 24.)
Fang et al.
18. As illustrated in Figure 1, Fang discloses a method and system
for providing reliable power supply for a personal health monitor, whereby
various components (25) are monitored by the controller (16). (Col 5, ll. 25-
37, and col. 6, ll. 7-29.) The personal computer (25d) works in conjunction
with that voltage detector (30) to measure the operating voltage of the
personal health monitor. (Col. 7, ll. 13-16.) The voltage level is measured
directly through a connection to the outputs of the switching power supply
(“SPS”) (18) and the battery (22). (Col. 7, ll. 16-20.) The personal
computer (25d) utilizes data converted from the respective voltage readings
to shut off the power from the battery (22) when the battery (22) drops to or
below 5.4 volts. (Col. 7, ll. 20-31.)
19. When the AC power is disrupted, the voltage drops down to
approximately 3.0 amps loading and the battery (22) can continue to operate
the personal health monitor for approximately 2 hours. (Col. 6, ll. 30-41.) If
the battery (22) drops below 5.4 volts, the controller (16) disconnects most
of the components, including the personal computer (25d), so the battery
(22) can conserve power. (Col. 6, ll. 50-53.)
20. Fang discloses a method and system for providing reliable
power supply to a personal health monitor, thereby reducing requirements on
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the battery during power outages and conserving battery power so that
minimal essential operations and data can be maintained. (Col. 4, ll. 1-13.)

IV. PRINCIPLES OF LAW
Burden on Appeal
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998)).
Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 3 (1996).
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR, 550 U.S. at 405.
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham, 383 U.S. at 17-18. See also KSR, 550 U.S. at 407
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(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious without an explicit application of the teaching, suggestion,
motivation test. 550 U.S. at 415.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248” id. (citing Graham, 383 U.S. at 12); and reaffirmed principles
based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.

Id. at 417. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
If the claimed subject matter cannot be fairly characterized as
involving a simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for
improvement, a holding of obviousness can be based on a showing that
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“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 418. Such a showing requires the Examiner provide “some
articulated reasoning” in the rejection, which possesses a “rational
underpinning to support the legal conclusion of obviousness.” Id. (quoting
Kahn, 441 F.3d at 988). The Supreme Court citing Kahn stated that
“rejections 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,
550 U.S. at 418. However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
It is a basic principle that the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made. See Merck & Co. Inc., v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989).
Nor is it necessary that suggestion or motivation be found within the
four corners of the references themselves. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference … Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
“The obviousness analysis cannot be confined by the formalistic conception
of the words teaching, suggestion, and motivation, or by overemphasis on
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the importance of … the explicit content of issued patents.” KSR, 550 U.S.
at 419.
Consistent with KSR, the Federal Circuit recently recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Id. at 1162.
Teaching Away
“What the prior art teaches and whether it teaches toward or away
from the claimed invention … is a determination of fact.” Para-Ordnance
Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995).
“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.” In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). Teaching an alternative or equivalent method, however, does not
teach away from the use of a claimed method. In re Dunn, 349 F.2d 433,
438 (CCPA 1965).

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V. GROUPING OF CLAIMS
Appellants argue claims 1, 5 through 11, and 14 as a first group.
Further, Appellants separately argue the rejection of claims 2 and 3 as a
second group. Additionally, Appellants argue the rejection of claims 12 and
13 as a third group. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), claims
1, 5 through 11 and 14, 2 and 3, 12 and 13 stand and fall with claims 1, 2,
and 12 respectively. We will separately address the rejections of claims 1, 2,
and 12.

VI. ANALYSIS
Claims 1, 5-11, and 14
Independent claim 1 recites in relevant parts (1) a security region
containing a plurality of security components, (2) a first battery disposed in
the security region with physical access precluded, and (3) a second battery
disposed outside the security region for supplying power upon a power
outage. As set forth in the Findings of Fact section, Naclerio discloses a
postal security device (PSD) that is encased by a secure housing. (FF 6.)
Further, Yoshimura compliments Naclerio by disclosing a second battery
(BAT 2) that backs up the memory during the replacement of the first
battery (BAT 1). (FF 11.) We find that Naclerio and Yoshimura disclose
prior art elements that perform their ordinary functions to predictably result
in a tamper-resistant electronic device that utilizes an external battery to
extend the life of an internal battery. See KSR, 550 U.S. at 418-419.
Assuming arguendo that the Examiner must articulate some additional
reasoning for combining the references, the Examiner provides ample
reasoning for the proffered combination. In particular, the Examiner
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explained that it would have been obvious to one of skill in the art at the
time of the invention to modify Naclerio’s tamper-resistant postal security
device with Yoshimura’s first and second batteries in order to back up
memory and to prevent data loss by utilizing a second battery during loss of
power or replacement of a first battery. (FF 10, 11.) As admitted by
Appellants, Naclerio addresses the same problem as the claims on appeal.
(App. Br. 5.) We find that Yoshimura addresses the same problem as
Appellants’ because the accessible, second battery lengthens the life of the
first battery, thereby increasing the service life of the electronic device. (FF
4, 10, 11.) Furthermore, we find that cited references are within the relevant
field of endeavor since they all pertain to the power supply of electronic
devices. (FF 4, 7, 8, 10.) We therefore do not agree with Appellants that the
Examiner has not provided sufficient rationale to warrant the proffered
combination.
Further, Appellants argue that Naclerio teaches away from
Yoshimura. (App. Br. 7.) We do not agree. Naclerio discloses that the
larger Random Access Memory (RAM) and other components contained
within the postal security device (PSD) receive external power. (FF 7.)
Further, Naclerio discloses that the smaller RAM contained within the PSD
is capable of receiving power from a back-up battery. (FF 8.) Appellants
have shown nothing in Naclerio that would have discouraged a person of
ordinary skill from trying to incorporate a back-up battery outside of the
PSD’s secure housing. Appellants have not pointed to an explicit disclosure
within Naclerio stating that a second battery located outside the secure
housing cannot be utilized as a back-up battery. Instead, we view Naclerio’s
disclosure that the smaller RAM contained within the PSD may receive
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power from a back-up battery as an alternative or equivalent teaching to
utilizing back-up batteries. Therefore, Appellants have not shown that
Naclerio’s disclosure of the smaller RAM receiving power from an internal
back-up battery teaches away from the claimed second battery disposed
outside the security region for supplying power upon a power outage. It
follows that Appellants have not shown that the Examiner erred in
concluding that the ordinarily skilled artisan would have found sufficient
rationale to combine Naclerio’s tamper-resistant postal security device with
Yoshimura’s first and second batteries in order to back up memory and
prevent data loss by utilizing a second battery during loss of power or
replacement of a first battery, as recited in independent claim 1.

Claims 2 and 3
Dependent claim 2 recites in relevant parts an analog-to-digital
converter for converting voltage information into digital information. As
discussed above, we find no deficiencies in the Naclerio and Yoshimura
combination. As set forth in the Findings of Fact section, Wiley discloses an
A/D converter that receives and digitizes analog signals. (FF 14.) We find
that Naclerio, Yoshimura, and Wiley disclose prior art elements that perform
their ordinary functions to predictably result in a tamper-resistant electronic
device that includes a monitoring unit that comprises an analog-to-digital
converter. See KSR, 550 U.S. at 416.
Assuming arguendo that the Examiner must articulate some additional
reasoning for combining the references, the Examiner provides ample
reasoning for the proffered combination. Particularly, the Examiner
explained that it would have been obvious to one of skill in the art at the
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time of the invention to modify the Naclerio and Yoshimura combination
with Wiley’s analog-to-digital converter in order to monitor the voltage
status of a battery. (FF 15.) As discussed above, we find that Naclerio and
Yoshimura address the same problem as Appellants. Furthermore, we find
that cited references are within the relevant field of endeavor since they all
pertain to the power supply of electronic devices. (FF 7, 8, 10, 14.) We
therefore do not agree with Appellants that the Examiner has not provided
sufficient rationale to warrant the proffered combination. It follows that
Appellants have not shown that the Examiner erred in concluding that the
ordinary skilled artisan would have found sufficient rationale to combine
Naclerio and Yoshimura with Wiley’s analog-to-digital converter to monitor
the voltage status of a battery, as recited in dependent claim 2.
Dependent claim 3, recites in relevant parts (1) a processor that
generates a signal indicating a supply status and (2) an externally visible
indicator that receives the status signal and displays a visual indication. As
discussed above, we find no deficiencies in the Naclerio and Yoshimura
combination. As set forth in the Findings of Fact section, Wiley discloses a
visual display and display processor coupled to a central processing unit.
(FF 16.) We find that Naclerio, Yoshimura, and Wiley disclose prior art that
perform their ordinary functions to predictably result in a tamper-resistant
electronic device that includes a monitoring unit that comprises a display
processor and indicator. See KSR, 550 U.S. at 416.
Assuming arguendo that the Examiner must articulate some additional
reasoning for combining the references, the Examiner provides ample
reasoning for the proffered combination. Particularly, the Examiner
explained that it would have been obvious to one of skill in the art at the
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time of the invention to modify the Naclerio and Yoshimura combination
with Wiley’s display processor and indicator in order to ensure that the
electronic device is functioning properly and reliable for its intended use.
(FF 17.) As discussed above, we find that Naclerio and Yoshimura address
the same problem as Appellants and the cited references are within the
relevant field of endeavor. We therefore do not agree with Appellants that
the Examiner has not provided sufficient rationale to warrant the proffered
combination. It follows that Appellants have not shown that the Examiner
erred in concluding that the ordinary skilled artisan would have found
sufficient rationale to combine Naclerio and Yoshimura with Wiley’s
display processor and indicator in order to ensure that the electronic device
is functioning properly and reliable for its intended use, as recited in
dependent claim 3.
Claims 12 and 13
Dependent claim 12 recites in relevant parts (1) a plurality of
operating components, (2) at least one operating component connected to a
processor, and (3) the processor capable of altering an operation of at least
one operating component if the voltage information indicates that the second
battery needs to be replaced. As discussed above, we find no deficiencies in
the Naclerio and Yoshimura combination. As set forth in the Findings of
Fact section, Fang discloses various components that are monitored by a
controller, including a personal computer that measures the operating
voltage and shuts off the power from the battery if the battery drops to or
below 5.4 volts. (FF 18). We find that Naclerio, Yoshimura, and Fang
disclose prior art elements that perform their ordinary functions to
predictably result in a tamper-resistant electronic device that includes a
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processor that monitors operating voltage and alters battery usage
accordingly. See KSR, 550 U.S. at 416.
Assuming arguendo that the Examiner must articulate some additional
reasoning for combining the references, the Examiner provides ample
reasoning for the proffered combination. Particularly, the Examiner
explained that it would have been obvious to one of skill in the art at the
time of the invention to modify the Naclerio and Yoshimura combination
with Fang’s processor that evaluates operating voltage and alters battery
usage in order to provide a reliable power supply and conserve battery
power. (FF 20.) As discussed above, we find that Naclerio and Yoshimura
address the same problem as Appellants. Furthermore, we find that cited
references are within the relevant field of endeavor, since they all pertain to
the power supply of electronic devices. (FF 7, 8, 10, 18.) We therefore do
not agree with Appellants that the Examiner has not provided sufficient
rationale to warrant the proffered combination. It follows that Appellants
have not shown that the Examiner erred in concluding that the ordinary
skilled artisan would have found sufficient rationale to combine Naclerio
and Yoshimura with Fang’s processor that evaluates operating voltage and
alters battery usage in order to provide a reliable power supply and conserve
battery power, as recited in dependent claim 12.
Dependent claim 13 recites in relevant parts that the processor
prevents operation of at least one operating component after a predetermined
delay if the voltage information indicates a need to replace the second
battery. As discussed above, we find no deficiencies in the Naclerio and
Yoshimura combination. As set forth in the Findings of Fact section, Fang
discloses that if the battery voltage drops below 5.4 volts, the controller
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shuts down the personal computer so the battery can conserve power. (FF
19.) We find that Naclerio, Yoshimura, and Fang disclose prior art that
perform their ordinary functions to predictably result in a tamper-resistant
electronic device that includes shutting down a personal computer to
conserve battery power if the battery voltage drops to or below a specified
voltage. See KSR, 550 U.S. at 416.
Assuming arguendo that the Examiner must articulate some additional
reasoning for combining the references, the Examiner provides ample
reasoning for the proffered combination. Particularly, the Examiner
explained that it would have been obvious to one of ordinary skill in the art
at the time of the invention to modify the Naclerio and Yoshimura
combination with Fang’s processor that shuts down to conserve battery
power once the battery voltage drops to or below a specified voltage in order
to provide a reliable power supply and conserve battery power. (FF 20.) As
discussed above, we find that Naclerio and Yoshimura address the same
problem as Appellants and the cited references are within the relevant field
of endeavor. We, therefore, do not agree with Appellants that the Examiner
has not provided sufficient rationale to warrant the proffered combination. It
follows that Appellants have not shown that the Examiner erred in
concluding that the ordinary skilled artisan would have found sufficient
rationale to combine Naclerio and Yoshimura with Fang’s processor that
shuts down to conserve battery power once the battery voltage drops to or
below a specified voltage, as recited in dependent claim 13.

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Application 10/007,899

21
VII. CONCLUSIONS OF LAW
A. Appellants have not shown that the Examiner erred in
concluding that:
1. the combination of Naclerio and Yoshimura renders claims 1, 5
through 11 and 14 unpatentable under 35 U.S.C. § 103(a).
2. the combination of Naclerio, Yoshimura, and Wiley renders
dependent claims 2 and 3 unpatentable under 35 U.S.C. § 103(a).
3. the combination of Naclerio, Yoshimura, and Fang renders
dependent claims 12 and 13 unpatentable under 35 U.S.C. § 103(a).
B. We affirm these rejections.

VIII. DECISION
We affirm the Examiner’s decision to reject claims 1 through 3 and 5
through 14. 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

erc

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