Ex Parte Barnes et al

Patent Trial and Appeal BoardDec 1, 2017

13800888 (P.T.A.B. Dec. 1, 2017)

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. 13/800,888 03/13/2013 Philip Lionel Barnes 1012-006-004-000000 2732 44765 7590 12/14/2017 INTELLECTUAL VENTURES - ISF ATTN: DOCKETING, ISF 3150- 139th Ave SE Bldg. 4 Bellevue, WA 98005 EXAMINER AZAD, MD ABUL K ART UNIT PAPER NUMBER 2127 NOTIFICATION DATE DELIVERY MODE 12/14/2017 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): ISFDocketInbox@intven.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PHILIP LIONEL BARNES, HON WAH CHIN, HOWARD LEE DAVIDSON, KIMBERLY D.A. HALLMAN, RODERICK A. HYDE, MURIEL Y. ISHIKAWA, JORDIN T. RARE, BRIAN LEE, RICHARD T. LORD, ROBERT W. LORD, CRAIG J. MUNDIE, NATHAN P. MYHRVOLD, NICHOLAS F. PASCH, ERIC D. RUDDER, CLARENCE T. TEGREENE, MARC TREMBLAY, DAVID B. TUCKERMAN, CHARLES WHITMER, and LOWELL L. WOOD JR Appeal 2017-003164 Application 13/800,8881 Technology Center 2100 Before ELENI MANTIS MERCADER, ERIC S. FRAHM, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—36. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Elwha LLC, an affiliate of The Invention Science Fund II, LLC, as the real party in interest. App. Br. 3. Appeal 2017-003164 Application 13/800,888 STATEMENT OF THE CASE Introduction Appellants’ disclosed and claimed invention is directed to “limiting exterior temperatures of a shell housing a portable electronic device encountered by a user.” Spec. 113. In a disclosed embodiment, a portable electronic device comprises a contact sensor configured to determine a user touch to the shell; a temperature sensor configured to determine the exterior temperature of the shell; and a thermal manager configured to reduce the exterior shell temperature responsive to the determined user touch and determined exterior shell temperature. Spec. 112. Claim 1 is illustrative of the subject matter on appeal and is reproduced with the disputed limitation emphasized in italics'. 1. A portable electronic device comprising: a shell housing components of the portable electronic device; a heat-generating component; a contact sensor configured to determine a user touch to the shell; a temperature sensor configured to determine an exterior temperature of the shell', and a thermal manager configured to reduce the exterior shell temperature by regulating heat generation by the heat-generating component, the regulating heat generation responsive to the determined user touch and the determined temperature of the shell. The Examiner’s Rejection Claims 1—36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hiromitsu (JP 2010-237750; Oct. 21, 2010) and Senyk et al. (US 2009/0145579 Al; June 11, 2009) (“Senyk”). Final Act. 5-30. 2 Appeal 2017-003164 Application 13/800,888 Issue on Appeal2 Did the Examiner err in finding Senyk teaches “a temperature sensor configured to determine an exterior temperature of the shell,” as recited in claim 1 and as commensurately recited in independent claims 21, 22, and 29? ANALYSIS3 In rejecting the pending independent claims (i.e., claims 1, 21, 22, and 29), the Examiner finds Hiromitsu does not explicitly teach determining or measuring an exterior temperature of the shell of an electronic device. See Final Act. 6, 18, 20, and 25.4 Instead, the Examiner relies on Senyk to teach this limitation. See Final Act. 6 (citing Senyk 123, Figs. 2, 3), see also Final Act. 18—20, 26; Ans. 31—32 (citing Senyk 123). Appellants argue the temperature sensor of Senyk does not measure or determine the exterior temperature of the shell, but is used to sensor the temperature of a microprocessor running internal to the device. App. Br. 26 (citing Senyk 123); Reply Br. 6. 2 We only address this issue, which is dispositive. We do not address other issues raised by Appellants’ arguments. 3 Throughout this Decision, we have considered the Appeal Brief, filed September 16, 2016 (“App. Br.”); the Reply Brief, filed December 9, 2016 (“Reply Br.”); the Examiner’s Answer, mailed October 20, 2016 (“Ans.”); and the Final Office Action, mailed February 18, 2016 (“Final Act.”), from which this Appeal is taken. 4 In the event of further prosecution, we invite the Examiner to consider whether the temperature sensor of Hiromitsu teaches the claimed temperature sensor to measure an exterior temperature of the shell, as recited in claim 1 and as commensurately recited in independent claims 21, 22, and 29. See Hiromitsu 115, Fig. 1. 3 Appeal 2017-003164 Application 13/800,888 Senyk is generally directed to “the dissipation of heat generated by a microprocessor.” Senyk 13. In a disclosed embodiment, Senyk describes a cooling system for a portable notebook computer. Senyk 119. The cooling system comprises a tube coupled to a heat transfer plate; the tube contains a fluid that removes heat from a heat source (e.g., a microprocessor) and transfers the heat to the heat transfer plate. Senyk 119. Senyk further discloses the cooling system is activated when the temperature of the microprocessor (i.e., the heat-generating source) reaches a threshold level. Senyk 123. A temperature sensor is used to measure the temperature of the microprocessor. Senyk 123 (“The cooling system is activated when temperature sensor 180 sends a signal to power management system 132 indicating that a threshold temperature has been reached by microprocessor 130”). We agree with Appellants that the temperature sensor of Senyk is configured to measure the temperature of the microprocessor—an internal device—rather than the exterior shell temperature. The Examiner’s findings that the temperature sensor of Senyk measures the exterior temperature of the shell (i.e., computer housing) is not supported by sufficient technical reasoning or a preponderance of evidence. For the reasons discussed supra, we are persuaded of Examiner error. Accordingly, we do not sustain the Examiner’s rejection of claim 1. For similar reasons, we do not sustain the Examiner’s rejection of independent claims 21, 22, and 29, which recite similar limitations. Additionally, for similar reasons, we do not sustain the Examiner’s rejection of claims 2—20, 23—28, and 30—36, which depend therefrom. 4 Appeal 2017-003164 Application 13/800,888 DECISION We reverse the Examiner’s decision rejecting claims 1—36. REVERSED 5