Ex Parte York

Board of Patent Appeals and Interferences

Aug 31, 2010

10651586 (B.P.A.I. Aug. 31, 2010)

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.
10/651,586 08/29/2003 Dennis York TRMB1412 9289
70409 7590 08/31/2010
TRIMBLE NAVIGATION LIMITED C/O WAGNER BLECHER
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
PEYTON, TAMMARA R
ART UNIT PAPER NUMBER
2182
MAIL DATE DELIVERY MODE
08/31/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS YORK
____________

Appeal 2009-003818
Application 10/651,586
Technology Center 2100
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-00-3818
Application 10/651,586

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We Affirm.
Invention
Appellant’s invention is related to the field of portable electronic
instruments. More particularly, Appellant’s invention on appeal is directed
to battery powered portable instruments with input/output (I/O) ports. (Spec.
1).
Claim 1 is illustrative:
1. A processing unit for an electronic instrument comprising:
a signal/data processor;
an exposed external electrical contact for receiving electric
power input;
an exposed external electrical contact for receiving an electric
signal input;
an exposed external electrical contact for transmitting an
electrical signal output; and
a housing comprising mechanical retention features for securely
attaching a battery/input/output module.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Ross US 5,859,628 Jan. 12, 1999
Kamijo US 6,538,880 B1 Mar. 25, 2003
Appeal 2009-00-3818
Application 10/651,586

3
Dickie US 6,798,647 B2 Sep. 28, 2004

Appellant appeals the following rejections:
1. Claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over Dickie.
2. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Dickie, Kamijo,
or Ross.
APPELLANT’S CONTENTIONS
Appellant contends that Dickie fails to disclose a housing comprising
mechanical retention features for securely attaching a battery/input/output
module. (App. Br. 10).
Appellant contends that the Examiner did not provide a prima facie
rejection of claims 10-12. (App. Br. 15).

ISSUES
1. Under § 103, did the Examiner err in determining that Dickie
discloses “a housing comprising mechanical retention features
for securely attaching a battery/input/output module?” (Claim
1)2
2. Under §103, did the Examiner fail to provide a prima facie
rejection of claims 10-12?

2 Appellant did not separately argue independent claim 15. Therefore
claim 15 stands or falls with independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii). Regarding independent claim 8, it is our view that
Appellant relies on essentially the same arguments as those presented for
claim 1. (App. Br. 13-14).
Appeal 2009-00-3818
Application 10/651,586

4
FACTUAL FINDINGS
We adopt the Examiner’s findings in the Answer as our own, except
as to those findings that we expressly overturn or set aside in the Analysis
that follows. We add the following factual findings:
1. Dickie discloses a portable computer 104. (Fig. 1) The portable
computer includes a docking cradle 120. (Id.). The docking
cradle 120 is used to secure a personal digital assistant (PDA)
102 (Id).

2. Dickie discloses that the docking cradle 120 contains a release
latch 210, and electrical contacts 310. (Fig. 3; col. 3 ll. 39-41,
53-55)

3. Dickie discloses “[t]he interfaces 404 and 414 support both data
communication and power transfer. In one implementation, the
interfaces facilitate serial communication, although the
interfaces may be configured to support parallel
communication.” (Col. 4, ll. 7-11).

4. Dickie teaches that power may be supplied to charge a battery
resident at the PDA 102. (Col. 3, ll. 20-21).

ANALYSIS
Based upon our review of the record, we find unconvincing
Appellant’s argument that Dickie does not disclose “a housing comprising
Appeal 2009-00-3818
Application 10/651,586

5
mechanical retention features for securely attaching a battery/input/output
module.” (App. Br. 10; see claim 1).
We find Dickie discloses a portable computer 104 (processing unit for
a portable electronic instrument) that includes a processor 410, and a
terminal for receiving power and signal input/output 420. (Fig. 4)
We further find that Dickie discloses that the portable computer
includes a docking cradle (housing) (FF 1). The docking cradle includes a
latch (mechanical retention features) 210 for attaching a PDA, and electrical
contacts. (FF 2).
We further find that the “Power” portion of “Interface” 404 of Dickie
teaches or suggests the “battery” of the claimed battery/input/output module,
as Dickie expressly teaches that power may be supplied to charge a battery
resident at the PDA 102. (FF 4).
The Interface 404 of the PDA further includes input/output
functionality via its coupling with portable computer 420. Thus, it is our
view that the PDA of Dickie renders obvious the limitations of the housing
(portable computer) that attaches a battery/input/output module (PDA), as
claimed.
Consistent with our above discussion, we similarly find Dickie’s PDA
102 (battery/input/output module) clearly teaches or suggests the argued
limitations of independent claim 8. Dickie’s PDA 102 has a battery (i.e. a
storage device for electrical energy (FF 4), and also exposed external
electrical contacts for power and signals (Interface 404, Fig. 4), and a
housing comprising a mechanical retention feature for securely attaching
PDA 102 to a processing unit. (Dickie’s portable computer 104). See
Dickie’s discussion of the docking procedure, col. 3, ll. 28-60.
Appeal 2009-00-3818
Application 10/651,586

6
Based on the record before us, we find that Appellant has not shown
the Examiner erred in rejecting independent claims 1, 8, and 15. Because
Appellant presents no separate arguments for dependent claims 2-7, 9, 13,
14, and 16-20, these claims fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Claims 10-12
Appellant contends that the Examiner has not provided a prima facie
rejection of claims 10-12. (App. Br. 15). While the Examiner clearly
rejected these claims on page 2 of the Final Office Action mailed Jan. 24,
2007, the Examiner did not set forth a detailed explanation of the rejection.
However, the Examiner explains the rejection on page 14 of the Answer and
Appellant has responded in the Reply Brief. (pp. 4-5). Therefore, we
consider Appellant’s arguments traversing the Examiner’s clarification of
the rejection. (Id.). 3
We do not agree with Appellant’s contention that there is no
evidentiary basis in the record to support the Examiner’s rejection of claims
10-12. (Reply Br. 4-5).
While the Dickie reference does not use the literal term “port,” Dickie
expressly teaches that “[t]he interfaces 404 and 414 support both data
communication and power transfer. In one implementation, the interfaces
facilitate serial communication, although the interfaces may be configured to

3 Since Appellant responded to the clarification of the Examiner’s rejection
in the Reply Brief and we have considered those arguments, Appellant has
been afforded due process.
Appeal 2009-00-3818
Application 10/651,586

7
support parallel communication.” (FF 3). Given this teaching, we find
Dickie’s data interfaces 404 and 414 are serial or parallel “ports” or at least
suggestive of serial or parallel “ports” within the meaning of claims 10 and
11. We also find Dickie inherently teaches a wireless transceiver as
necessary to effect the bidirectional IR data coupling or RF data coupling
described in column 3 (at line 17) and clearly depicted in Figure 4 (denoted
with a bidirectional arrow).
Given the aforementioned evidence, we find Appellant’s traversal in
the Reply Brief of the Examiner’s clarified rejection unpersuasive.
Therefore, we sustain the Examiner’s rejection of claims 10-12.

DECISION
We affirm the Examiner’s § 103 rejections of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

pgc

TRIMBLE NAVIGATION LIMITED C/O WAGNER BLECHER
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076