Dell Products L.P.

Patent Trials and Appeals Board

Aug 6, 2021

2020000374 (P.T.A.B. Aug. 6, 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.
14/691,770 04/21/2015 Rocco Ancona DC-104727.01 2269
154702 7590 08/06/2021
Zagorin Cave LLP (Dell)
4101 Parkstone Heights Drive
Suite 350
Austin, TX 78746
EXAMINER
COHEN, YARON
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
08/06/2021 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):
USPTO@dockettrak.com
docket279@atxiplaw.com
rholland@atxiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ROCCO ANCONA, VINH X. BUI,
MICHIEL SEBASTIAAN EMANUEL PETRUS KNOPPERT,
JOHN T. MORRISON, and MARK R. LIGAMERI1
________________

Appeal 2020-000374
Application 14/691,770
Technology Center 2600
________________

Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 3–20, which constitute all claims pending in this
application. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). The
Board conducts a limited de novo review of the appealed rejections for error
based upon the issues identified by Appellant, and in light of the arguments
and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential). We reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Dell Products L.P. as the real party in interest. Appeal Brief filed
April 5, 2019 (“Appeal Br.”) at 1.
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Application 14/691,770

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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
An expansion device couples to a capacitive mat disposed
on a desktop surface and communicates power and data through
the capacitive mat to perform functions in support of an
information handling system. For example, the expansion device
powers an inductive charger to charge a peripheral device,
accepts end user touch inputs with a capacitive touch sensor,
presents visual information at an integrated display in response
to pixel values provided by the information handling system
though the capacitive mat.
Spec. Abstr.
Independent claim 1, reproduced below, illustrates the subject matter
of the appealed claims:
1. An information handling system modular capacitive mat
comprising:
a capacitive mat having an integrated display operable to
present visual images generated by an information handling
system, the capacitive mat disposed on a desktop surface and
including capacitive sensors operable to detect touches and
communicate touch locations to the information handling
system;
an expansion coupling device disposed at a side of the
capacitive mat and operable to physically couple with an
expansion device and communicate electrical signals between
the capacitive mat and the expansion device through a physical
connection, the expansion coupling device having first and
second rails extending outward from the capacitive mat to create
an opening sized to fit the expansion device; and
an expansion device configured to affix to the expansion
coupling device in the opening, the expansion device having an
upper surface operable to perform a function supported by the
electrical signals including at least an inductive charger disposed
proximate the upper surface and operable to inductively charge a
device placed on the upper surface; and
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Application 14/691,770

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a power controller disposed in the expansion device and
operable to accept power from the electrical signals and
selectively apply power to the inductive charger.

STATEMENT OF THE REJECTIONS
Claims 1, 3–7, 9, 14–16, and 18 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combined teachings of Lee
(US 2015/0379964 A1; published Dec. 31, 2015), Metz
(US 2004/0142600 A1; published July 22, 2004), and Park
(US 2016/0126779 A1; published May 5, 2016). Final Action mailed Oct.
15, 2018 (“Final Act.”) at 3–11.
Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combined teachings of Lee, Metz, Park, and Chai
(US 2016/0054905 A1; published Feb. 25, 2016). Final Act. 11–12.
Claims 10, 11, 13, 17, 19, and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combined teachings of Lee and Metz. Final
Act. 12–15.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combined teachings of Lee, Metz, and Chai. Final Act. 15.

DETERMINATIONS AND CONTENTIONS
The Examiner finds that Lee discloses most of the limitations of
claim 1. Final Act. 3–5. However, the Examiner finds that Lee does not
disclose the expansion coupling device having first and second rails
extending outward from the capacitive mat to create an opening sized to fit
the expansion device; and an expansion device configured to affix to the
expansion coupling device in the opening. Id. at 5. The Examiner finds that
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Application 14/691,770

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Metz teaches these additional limitations and that motivation existed to
combine the teachings of Metz and Lee. Id. at 6.
The Examiner further finds that the combination of Lee and Metz
does not disclose including at least an inductive charger disposed proximate
the upper surface and operable to inductively charge a device placed on the
upper surface; or a power controller disposed in the expansion device and
operable to accept power from the electrical signals. Final Act. 7. The
Examiner finds that Park discloses these limitations. Id. at 7–8.
In the Examiner’s Answer mailed July 11, 2019 (“Ans.”), the
Examiner clarifies how Lee is being modified with the teachings of Metz:
While the contact rails of Metz would originate in the
interior of the computer 100, the contact rails would have to
extend outward from within chamber 110 of the computer 100 in
order to accept the housing 32 of docking station 30. As Metz
discloses that the contact rails may be disposed along one or
more sides of housing 32, the contact rails would be creating an
opening sized to fit the docking station housing 30.
Ans. 4.
Appellant asserts,
[n]one of these references disclose rails that extend to define an
opening suitable to accept an expansion device. Metz, which the
Examiner relies upon for this feature, accepts a [Personal
Computer Memory Card International Association (PCMCIA)]
card that is inserted into a computer [PCMCIA] port and makes
no suggestion whatsoever for extending rails out of the computer.
Appeal Br. 2–3. Appellant further asserts, “Metz’s rails remain in a slot in
the interior of a computer. No reasonable reconstruction of Lee in view of
Metz’s internal rails results in the extending or ‘sliding’ of rails to create of
an opening to accept a capacitive mat.” Id. at 3.

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Application 14/691,770

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ANALYSIS
The Examiner has not sufficiently established a prima facie case of
obviousness. We understand that in the proposed combination of Lee and
Metz, one of Lee’s phones corresponds to the claimed capacitive mat, and
the other phone corresponds to the claimed expansion device. And the
Examiner explains that the rejection is based upon combining an alternative,
non-depicted embodiment of Metz wherein contacts are provided on the
exterior sides of the PCMCIA chamber 110. Final Act. 6 (citing Metz ¶ 17).
But, the Examiner does not clearly articulate how the exterior rails of Metz’s
PCMCIA chamber 110 are to be incorporated into Lee’s cell phones so as to
extend outward from the phones (per claims 1 and 17) or slide outward (per
claim10).
In a light most favorable to the Examiner, we might assume arguendo
that the Examiner is proposing to take some sort of double-ended PCMCIA
connector that has external contacts or “rails,” and interconnect two cell
phones by inserting this connector therebetween. But even if this is the
Examiner’s actual theory (and it is not certain that it is), this theory still does
not sufficiently explain how these two rails of the PCMCIA connector
“create an opening sized to fit the expansion device,” as claimed. See Final
Act. 6.
We, therefore, reverse the obviousness rejection of independent
claim 1. We likewise reverse the obviousness rejections of independent
claims 10 and 17, which similarly recite the presence of an opening sized to
fit an expansion device. We, likewise, reverse the obviousness rejections of
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Application 14/691,770

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claims 3–7, 9, 11, 13–16, and 18–20, which depend from independent claims
1, 10, and 17.
With respect to the additional obviousness rejections of dependent
claims 8 and 12, the Examiner does not rely on the additional teachings of
Chai to cure the deficiency of the rejections of claims 1 and 10. Final
Act. 11–15. Accordingly, we also reverse the additional obviousness
rejections of claims 8 and 12.

DECISION SUMMARY
In summary:

REVERSED

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 3–7, 9, 14–16,
18
103 Lee, Metz, Park 1, 3–7, 9,
14–16, 18
8 103 Lee, Metz, Park,
Chai
8
10, 11, 13, 17, 19,
20
103 Lee, Metz 10, 11, 13,
17, 19, 20
12 103 Lee, Metz, Chai 12
Overall Outcome 1, 3–20