Dell Products L.P.

Patent Trials and Appeals Board

Jun 9, 2021

2020002202 (P.T.A.B. Jun. 9, 2021)

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.
14/842,459 09/01/2015 Greg R. Fiebrich 16356.1298US03_80189 9328
160825 7590 06/09/2021
HAYNES AND BOONE, LLP (16356)
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
ZAMAN, FAISAL M
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
06/09/2021 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GREG R. FIEBRICH,
DOUGLAS MESSICK, and KYLE CROSS
____________________

Appeal 2020-002202
Application 14/842,459
Technology Center 2100
____________________

Before JOHNNY A. KUMAR, JASON J. CHUNG, and
CARL L. SILVERMAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final rejection of claims 1–20.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Dell Products, L.P. as the real party in interest.
Appeal Br. 1.
Appeal 2020-002202
Application 14/842,459

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CLAIMED SUBJECT MATTER
Claims 1 and 14 are illustrative of the claimed subject matter:
1. A device battery charging system, comprising:
a power rail;
an input port that is coupled to the power rail; and
a controller that is coupled to the input port and the power
rail, wherein the controller is configured to:
detect a coupling of a device battery to the input port
when the power rail is not being supplied power such that the
power rail does not supply power to the input port, and the
input port is not being supplied power from the device battery;
and
cause, in response to detecting the coupling of the device
battery to the input port, the power rail to provide power from a
charging battery to the input port to charge the device battery.

14. A method for charging a device battery, comprising:
configuring, by a controller, at least one power
connection through a power rail between a charging battery and
an input port such that the power rail is not supplied power
from the charging battery so that the power rail does not supply
power to the input port;
monitoring, by the controller, for a coupling of a device
battery to the input port;
detecting, by the controller, the coupling of the device
battery to the input port when the power rail is not being
supplied power from the charging battery such that the power
rail does not supply power to the input port, and the input port
is not being supplied power from the device battery; and
causing, by the controller in response to detecting the
coupling of the device battery to the input port, power from the
charging battery to be provided to the input port to charge the
device battery.
Appeal Br. 11, 13 (Claims App.).
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Application 14/842,459

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REJECTIONS
Claims 1–20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Numano (US 2006/0035527 A1, pub. Feb. 16, 2006) and
Yee (US 2009/0055666 A1, pub. Feb. 26, 2009).
Claims 1–20 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1–20 of U.S. Patent No.
9,128,706.

ANALYSIS
Rejection under Non-Statutory Double-Patenting
Appellant advances no arguments regarding claims 1–20 as rejected
by the Examiner. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2018). Accordingly, we pro forma sustain the Examiner’s
rejection on the grounds of Non-Statutory Double-Patenting.

Rejection under 35 U.S.C. § 103(a): Claims 1–13
Appellant contests the Examiner’s findings regarding the following
limitations, as recited in independent claim 1:
detect a coupling of a device battery to the input port
when the power rail is not being supplied power such that the
power rail does not supply power to the input port, and the
input port is not being supplied power from the device battery;
and
cause, in response to detecting the coupling of the device
battery to the input port, the power rail to provide power from a
charging battery to the input port to charge the device battery.

Appeal 2020-002202
Application 14/842,459

4
Claim 1 (emphasis added).2 See Appeal Br. 2–9; Reply Br. 4–8.
The Examiner finds the aforementioned limitations are principally
taught by Yee, at paragraphs 27, 28, 30, 31, 35, 46, and 50 (Final Act. 4) and
at paragraph 41. Ans. 3, 4 (citing Yee, Fig. 9).
Appellant argues, and we agree:
Paragraph [0043] of Yee discusses how, when the physical
switch is tripped or activated, an enable sequence may begin for a
signal processor 205, and not the I/O port 201. Furthermore, this
portion of Yee does not explicitly teach that the alleged connection
between the physical switch and the signal processor 205 described in
the Office Action is now providing power to the signal processor as a
power rail would, as the physical switch could simply signal the signal
processor 205 with or without a conductor. Thus, because there is no
explicit teaching in Yee that there is some sort of conductor or
circuitry between the physical switch 901 and the I/O port 201 (see
Yee para. [0043]), and it is not necessarily present in a manner that
would be required to support an inherency argument (i.e., that there be
some conductor or circuitry between the physical switch 901 and the
I/O port 201 that provides power), . . . teaching in Yee does not
necessarily require that a power rail be shut off or partially shut off, as
the power rail may still receive power from a power source when the
I/O port 201 is completely shut off. . . .[T]he figures in Yee do not
depict actual wires/conductors between any of the components within
the router 103. That should not be interpreted to mean that those
components, for example signal processor and I/O port 201 (Figure 9),
are not connected at all. To the contrary, Yee discloses that the
various components communicate with one another (see, e.g.,
paragraph 0041) and such communication would occur over
wires/conductors.” Examiner’s response pp. 3-4 (Emphasis added). Lt
is the position of the Applicant that Yee's discussion of “a wake-up
signal 701 may be, for example, an electrical signal or some other
type of signal denoting activity” (para. [0041]) for communications,
does not explicitly teach, suggest, or make necessarily present, power
rails that provide power.

2 Independent claim 8 recites similar subject matter.
Appeal 2020-002202
Application 14/842,459

5
Reply Br. 5, 6 (emphasis omitted).
We agree with Appellant’s interpretation of the cited portions of Yee
relied upon by the Examiner. Id. We conclude that the Examiner’s findings
are not supported by the combination of Numano and Yee for the reasons set
forth by Appellant.
Accordingly, on this record, Appellant has persuaded us of error
regarding the obviousness rejection.
Because this determination resolves the appeal with respect to claim
1, we need not address Appellant’s other arguments regarding Examiner
error.
Accordingly, as such, we cannot sustain the Examiner’s rejection of
claims 1 and 8. Because we reverse the rejection of independent claims 1
and 8 on appeal, we also reverse the rejection of dependent claims 2–7, 9–
13.

Rejection under 35 U.S.C. § 103(a): Claims 14–20
There is no dispute as to the relevant teachings of Numano (see
Appeal Br. 2–9; Reply Br. 4–8). Based on Appellant’s arguments (id.) the
dispositive issue is whether Yee teaches the conditional limitation in the
independent method claim 14:
when the power rail is not being supplied power from the
charging battery such that the power rail does not supply
power to the input port, and the input port is not being supplied
power from the device battery; and
causing, by the controller in response to detecting the coupling
of the device battery to the input port, power from the charging
battery to be provided to the input port to charge the device
battery.
Appeal Br. 13, Claims App. (emphasis added).
Appeal 2020-002202
Application 14/842,459

6
As an initial matter of claim construction, we focus our analysis on
the disputed conditional limitation. We note that conditional steps employed
in a method claim need not be found in the prior art if, under the broadest
reasonable interpretation, the method need not invoke those steps. See Ex
parte Schulhauser, No. 2013-007847, 2016 WL 6277792 at *4 (PTAB April
28, 2016) (precedential) (holding “[t]he Examiner did not need to present
evidence of the obviousness of the remaining method steps of claim 1 that
are not required to be performed under a broadest reasonable interpretation
of the claim . . . .”; see also Ex parte Katz, No. 2010-006083, 2011 WL
514314, at *4–5 (BPAI Jan. 27, 2011).3
Applying this reasoning here, we conclude the condition precedent
(“[W]hen the power rail is not being supplied power from the charging
battery such that the power rail does not supply power to the input port, and
the input port is not being supplied power from the device battery”) of
method claim 14 is not recited positively as actually occurring, under a
broad but reasonable interpretation, and thus we do not give the contested
conditional step of claim 14 patentable weight.
Therefore, we find a preponderance of the evidence supports the
Examiner’s ultimate legal conclusion of obviousness for independent claim
14. See Final Act. 4, 5. As to claim 14, we adopt as our own: (1) the

3 See also Applera Corp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed. Cir.
2010) (unpublished) (affirming a district court’s interpretation of a method
claim as including a step that need not be practiced if the condition for
practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration Forum,
Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of course
true that method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.”).
Appeal 2020-002202
Application 14/842,459

7
findings and reasons set forth by the Examiner in the Final Office Action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments.
Accordingly, we sustain the Examiner’s rejection of representative
independent claim 14. Grouped claims 15–20, also rejected under the same
rejection and not argued separately fall with representative independent
claim 14. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the
Examiner’s rejection under § 103 of claims 14–20.

DECISION SUMMARY

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 Nonstatutory
Double Patenting
(US 9,128,706)
1–20
1–20 103(a) Numano, Yee 14–20 1–13
Overall
Outcome
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)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED