Ex parte Watts

Board of Patent Appeals and Interferences

Dec 22, 2000

08336040 (B.P.A.I. Dec. 22, 2000)

Application for patent filed November 8, 1994.1
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not written for publication and is not binding precedent of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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LAVAUGHN F. WATTS, JR.
_____________
Appeal No. 1997-3820
Application 08/336,0401
______________
Before MARTIN, FLEMING, and RUGGIERO, Administrative Patent
Judges.
MARTIN, Administrative Patent Judge.
DECISION ON RECONSIDERATION
Appellant has requested reconsideration of our August 28,
2000, decision (hereinafter "Decision") to the extent we
affirmed the examiner's 35 U.S.C. § 103 rejection of claim 11
Appeal No. 1997-3820
Application 08/336,040
We affirmed the rejection of claims 11-14 over Mesfin in2
view of Nishigaki and the rejection of claims 15-18 over
Mesfin in view of Nishigaki and Swindler. Therefore, at page
11, line 11, of the Decision, the phrase "The rejection is
affirmed" should read "The rejections are affirmed."
Reproduced in Decision at 3.3
- 2 -
and its dependent claims 12-18. As appellant correctly2
notes, claim 11, which reads as follows, requires that the
determining means be located within the computer docking
station:
11. A computer docking station, comprising:
connection means for coupling to an external
monitor and an external keyboard, and means for
connecting a portable computer to said docking
station; and
means for determining whether or not said
external monitor is coupled to said docking station,
automatically displaying on said external monitor
and disabling the monitor of the portable computer
when said external monitor is coupled to said
docking station and displaying on the display of
said portable computer when said external monitor is
not coupled to said docking station. [Emphasis
added.]
We agree with appellant's implication that claim 11 is
narrower in this respect than the other independent claims,
whose rejection for obviousness over Mesfin in view of
Nishigaki we also affirm. Claims 1 and 2, for example, each3
Appeal No. 1997-3820
Application 08/336,040
- 3 -
recite a computer docking system comprising a portable
computer, docking station, and determining means without
specifying the location of the determining means. Appellant
contends that because claim 11 requires the determining means
to be located within the docking station, our affirmance of
the rejection of that claim is inconsistent with our stated
assumption that the examiner is proposing to locate
Nishigaki's keyboard controller and
selector 41 within Mesfin's portable computer. Specifically,
in addressing claim 2, which calls for determining whether an
external keyboard is coupled to the docking station, we held
that
[b]ecause Nishigaki's common keyboard controller 23
and selector 41 are located within the laptop
computer, we assume the examiner intends to locate
both of these components in Mesfin's laptop computer
as well, in which case an external keyboard, when
connected to the docking station, will be connected
therethrough to the external keyboard connector of
the laptop computer. [Decision at 8.]
Furthermore, regarding claim 2, which like claim 11 calls for
the determining means to determine whether an external monitor
is coupled to the docking station, we noted (Decision at 8-9)
that appellant's brief fails to explain why the examiner was
Appeal No. 1997-3820
Application 08/336,040
- 4 -
incorrect to conclude that it would have been obvious to
extend Nishigaki's automatic external-keyboard detection
technique to the detection of an external monitor.
Appellant's argument on reconsideration appears to be
that claim 11 is satisfied only if it would have been obvious
to locate the monitor controller and the monitor selector
(analogous to Nishigaki's keyboard controller 23 and keyboard
selector 41) within Mesfin's docking station. We do not
agree. In our view, the "means for determining" limitation is
broad enough to read on a docking station which contains
apparatus for (a) determining whether or not an external
monitor is connected to the docking station and (b) issuing a
signal representing the result of this determination to a
portable computer which contains circuitry responsive to such
a signal for causing a display to appear on the external
monitor when one is present and otherwise on the display
device of the portable computer. Nevertheless, because the
examiner has failed to adequately explain why it would have
been obvious to provide Mesfin's docking station with
circuitry which determines whether an external monitor is
Appeal No. 1997-3820
Application 08/336,040
- 5 -
coupled thereto, we are reversing the rejections of claim 11
and its dependent claims 12-18.
The combined effect of our initial decision and this
decision on reconsideration is that (a) the § 103 rejection
based on Mesfin in view of Nishigaki is affirmed with respect
to claims 1-6, 9, 10, and 19-22 and reversed with respect to
claims 11-14, (b) the § 103 rejection based on Mesfin in view
of Nishigaki and Swindler is affirmed with respect to claim 7
and reversed with respect to claims 8 and 15-18, and (c) a new
§ 103 rejection
of claim 8 based on Mesfin in view of Nishigaki and Mitcham
has been entered pursuant to 37 CFR § 1.196(b).
RECONSIDERATION GRANTED
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 1997-3820
Application 08/336,040
- 6 -
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JCM:lmb
Appeal No. 1997-3820
Application 08/336,040
- 7 -
Ronald O. Neerings
Texas Instruments Incorporated
M/S 219
P.O. Box 655474
Dallas, TX 75265