Ex Parte Bhogal et al

Patent Trial and Appeal BoardApr 11, 2016

13302625 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/302,625 11/22/2011 Kulvir Singh Bhogal 45442 7590 04/13/2016 IBM CORPORATION (RVW) C/OROBERTV. WILDER, ATTORNEY AT LAW 10212 Cassandra Drive Austin, TX 78717 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 ATTORNEY DOCKET NO. CONFIRMATION NO. AUS920110295US 1 7697 EXAMINER WILLIAMS, JEFFERY L ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 04/13/2016 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): bobwilder@netzero.net rwilder6@austin.rr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KUL VIR SINGH BHOGAL, RICK ALLEN HAMIL TON II, ANDREW R. JONES, and BRIAN MARSHALL O'CONNELL Appeal2014-005378 1 Application 13/302,625 Technology Center 2600 Before JEAN R. HOMERE, CAROLYN D. THOMAS, and SHARON PENICK, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1--4, 6-13, and 15-20, which consist all of the claims pending in this appeal. App. Br. 2. Claims 5 and 14 have been canceled. Claims Appendix. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify the real party in interest as International Business Machines Corp. App. Br. 2. Appeal2014-005378 Application 13/302,625 Appellants' Invention Appellants invent a method and system for powering a first electronic device (101) externally coupled to a second electronic device (105) via a data terminal interface (e.g. USB). Spec. 1:9-12, 2:23-3:6, Fig. 1. In particular, upon detecting that the first electronic device ( 101) is in a powered down state, the second electronic device (105) powers the first electronic (101) device through the USB interface (103). Spec. 10:1--4, Fig. 3. Illustrative Claim Independent claim 1 is illustrative, and reads as follows: 1. A method for providing power to a first electronic device, said first electronic device including a data terminal arranged for receiving and sending data and commands to and from said first electronic device, said method comprising: detecting when a connecting cable is connected to said data terminal from a second electronic device; after said detecting, enabling a power connection between said first electronic device and said second electronic device through said data terminal for applying power to said first electronic device from said second electronic device through said data terminal if said first electronic device is detected to be in a powered-down state; and disabling said power connection between said first electronic device and said second electronic device if said first electronic device is detected not to be in a powered-down state. 2 Appeal2014-005378 Application 13/302,625 Moran Prior Art Relied Upon US 2004/0157638 Al Rejections on Appeal Aug. 12, 2004 Appellants request review of the following Examiner's rejections: Claim 20 stands rejected under 35 U.S.C. Â§ 112(b ), second paragraph as being indefinite for failing to particularly point out the subject matter, which Appellants regard as the invention. Claims 1--4, 6-13, and 15-20 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Moran. ANALYSIS We consider Appellants' arguments seriatim, as they are presented in the Appeal Brief, pages 9-16, and the Reply Brief, pages 2-5.2 Indefiniteness Rejection The Examiner concludes because the written description does not disclose a structure corresponding to the "detection device" recited in claim 20, the claim is indefinite. Fin. Act. 2. In response, Appellants argue that one of ordinary skill in the art would readily be apprised that the controller 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed October 11, 2013), the Reply Brief (filed March 1, 2014), and the Answer (mailed January 31, 2014) for their respective details. We have considered in this Decision only those arguments Appellants actually raised in the Briefs. Any other arguments Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). 3 Appeal2014-005378 Application 13/302,625 device (219) depicted in Figure 2 describes the controller device, without providing any indication of what the corresponding structure, material or acts would be for the "detection device," which is the subject of the rejection App. Br. 8-9. This argument is not persuasive. As correctly articulated by the Examiner, because the claim recites "a controller device coupled to said detection device," the two cited devices are separate and distinct. Therefore, the controller depicted in Figure 2 cannot describe the two distinct devices. At best, the depicted controller (219) corresponds to the claimed controller device. Ans. 4--5. Accordingly, we agree with the Examiner that the claimed detection device is unaccounted for in the written description, and is thereby not readily ascertainable. It follows Appellants have not shown error in the Examiner's indefiniteness rejection of claim 20. Anticipation Rejection Appellants argue although Moran discloses detecting a USB connection, it does not describe applying power to the device through the data terminal upon detecting that the electronic device is in a down powered state, or disabling the power connection upon detecting that the electronic device is in a powered on state. App. Br. 11-12. This argument is not persuasive. At the outset, we note Appellants have not particularly rebutted the Examiner's findings as set forth in the rejection. In particular, the Examiner finds because Moran discloses an interface circuit within a telephone for selecting a single one of two available power interfaces, depending on the 4 Appeal2014-005378 Application 13/302,625 powered state of the telephone, to thereby power a local storage system, Moran's disclosure necessarily describes detecting the power state of the telephone as a condition precedent for selecting the suitable power interface. Ans. 6-7 (citing Moran i-fi-113, 18, 30, 72-75). However, besides summarily arguing that Moran does not describe the disputed limitations set forth above, Appellants' argument fails to address any of the cited specific findings made by the Examiner. We have previously held that "[i]n relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (citation omitted). Further, our reviewing court has held that "after the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to appellant to 'prove that the subject matter shown to be in the prior art does not possess the characteristic relied on."' In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (quoting Jn re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)). See also MPEP Â§Â§ 2112 (IV), (V). This reasoning is applicable here. In our view, the cited technical reasoning provided by the Examiner is sufficient to support a prima facie case of anticipation based on inherency thereby shifting the burden to Appellants. However, by failing to address this finding of inherency, Appellants have failed to show by a preponderance of the evidence any error in the Examiner's finding that Moran's selection of a suitable power 5 Appeal2014-005378 Application 13/302,625 interface depending the power state of the telephone necessarily involves detecting the power state of the telephone. Appellants are reminded that merely reciting the claim language, and asserting that the Examiner's findings do not describe such limitations is not a persuasive argument. Appellants have therefore failed to show error in the Examiner's anticipation rejection of claim 1. Regarding the rejection of claims 2--4, 6-13, and 15-20, because Appellants have either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above, claim 2--4, 6-13, and 15-20 fall therewith. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). DECISION We affirm the Examiner's rejections of claims 1--4, 6-13, and 15-20 as set forth above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6