Ex Parte Downing

Patent Trial and Appeal BoardOct 15, 2012

11830678 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte BART M. DOWNING _____________ Appeal 2010-005900 Application 11/830,678 Technology Center 2100 ______________ Before: ROBERT E. NAPPI, ERIC S. FRAHM, and LARRY J. HUME, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005900 Application 11/830,678 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1, 5, 6, 8, 9, and 12 through 20. We affirm. INVENTION The invention is directed to a computer with a peripheral slot that can be used to house a peripheral (such as a CDROM drive) or a battery powered wireless access point. The battery in the access point is recharged when in the peripheral slot of the computer. Specification paragraphs 0010 and 0011. Claim 1 is representative of the invention and reproduced below: 1. A portable device, comprising: a wireless transceiver adapted to wirelessly communicate with a computing device; and a battery that provides power to the wireless transceiver; a first connector adapted to mate with a corresponding second connector in an optical bay of said computing device, and said battery receives charging current from said computing device via said first connector; wherein said portable device comprises a wireless access point. REFERENCES Kuo US 6,684,337 B1 Jan. 27, 2004 Do US 2006/0136646 A1 Jun. 22, 2006 Johnson US 2006/0022943 A1 Feb. 2, 2006 Solomon US 2006/0023410 A1 Feb. 2, 2006 Moon US 2008/0250179 A1 Oct. 9, 2008 Mark Long, Review: Linksys Wireless-G Travel Router, Mobile Tech Today (May 5, 2006), http://www.mobile-tech- today.com/story.xhtml?story_id=43033 (last visited Mar. 27, 2009) (“Long”). Appeal 2010-005900 Application 11/830,678 3 REJECTIONS AT ISSUE The Examiner has rejected claims 1, 5, 6, 8, 9, and 12 through 20 under 35 U.S.C. § 103(a) as unpatentable over Do in view of Long and Moon. Answer 4-121. The Examiner has rejected claims 1, 5, 6, 9, 13 and 15 through 20 under 35 U.S.C. § 103(a) as unpatentable over Kuo in view of Long and Moon. Answer 12-18. The Examiner has rejected claims 1, 5, 6, 9, 13 and 15 through 20 under 35 U.S.C. § 103(a) as unpatentable over Johnson in view of Long and Moon. Answer 12-24. The Examiner has rejected claims 8, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Johnson in view of Long, Moon and Solomon. Answer 24-28. ISSUES Rejection based upon Do, Long and Moon Appellant argues on pages 10 and 11 of the Brief2 that the Examiner’s rejection based upon these references is in error because: while the references teach battery-operated wireless devices, access points in general and that devices can be inserted into optical bays, the references do not show the particular combination of limitations in claim 1. These arguments 1 Throughout this opinion we refer to the Examiner’s Answer mailed on January 15, 2010. 2 Throughout this opinion we refer to Appellant’s Appeal Brief dated November 20, 2009 and Reply Brief dated February 23, 2010. Appeal 2010-005900 Application 11/830,678 4 present us with the issue: did the Examiner err in finding the skilled artisan would consider the combined teachings of Do, Long and Moon, to make obvious the use of a wireless access point that is charged by mating with a connected in an optical bay of a computer?3 Rejection based upon Kuo, Long and Moon Appellant argues on pages 11 and 12 of the Brief that the Examiner’s rejection based upon these references is in error because: while the references teach battery-operated wireless devices, access points in general and that devices can be inserted into optical bays, the references do not show the particular combination of limitations in claim 1. These arguments present us with the issue: did the Examiner err in finding the skilled artisan would consider the combined teachings of Kuo, Long and Moon to make obvious the use of a wireless access point that is charged by mating with a connected in an optical bay of a computer? Rejections based upon Johnson, Long and Moon Appellant argues on pages 12 and 13 of the Brief that the Examiner’s rejection based upon these references is in error because: while the references teach battery-operated wireless devices, access points in general and that devices can be inserted into optical bays, the references do not show 3 We note that Appellant also disputes the Examiner’s statement regarding an admission about inserting devices into optical bays being known. We do not reach this issue because as discussed infra there is ample evidence to show that inserting devices into optical bays was known, regardless of statements made by Appellant. Appeal 2010-005900 Application 11/830,678 5 the particular combination of limitations in claim 1. These arguments present us with the issue: did the Examiner err in finding the skilled artisan would consider the combined teachings of Johnson, Long and Moon to make obvious the use of a wireless access point that is charged by mating with a connected in an optical bay of a computer? ANALYSIS Rejection based upon Do, Long and Moon Appellant’s arguments directed to this rejection have not persuaded us that the Examiner erred in finding the skilled artisan would combine the teachings of Do, Long and Moon to make obvious the use of a wireless access point that is charged by mating with a connector in an optical bay of a computer. We have reviewed the Examiner’s rejection and response to Appellant’s arguments. The Examiner responds to the Appellant’s arguments that the claims represent nothing more than the combination of known elements to yield predictable results. Answer 28, 29. We concur with the Examiner’s findings and conclusions. Appellant’s arguments focus on the claimed use of an “optical bay” to provide a charging current for a wireless access point being significant and not taught by the art. Brief 11; Reply Brief 1. The Examiner has found that Do is silent as to what type of slot is used for connecting and charging the portable battery powered wireless peripheral and finds that it is well known to connect devices to a computer by inserting them in an optical bay and cites Moon as evidence of this finding. Answer 5. We note that Appellant’s Specification does not define what an optical bay is other than to describe it as a peripheral slot that may be used by an optical drive (CD ROM). Appeal 2010-005900 Application 11/830,678 6 Specification paragraph 10. Thus, the term “optical bay” is nothing more than a name given to a slot which accepts a peripheral. Moon provides further evidence of this in paragraphs 0023 and 0108. Thus, there is ample evidence that a skilled artisan would recognize that Do’s teaching of using a slot for connecting and charging the portable battery powered, wireless, peripheral could be applied to any slot for the computer which connects a peripheral such as a bay which can also accommodate an optical drive. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection based upon Do, Long and Moon. Rejection based upon Kuo, Long and Moon Appellant’s arguments directed to this rejection have not persuaded us that the Examiner erred in finding the skilled artisan would combine the teachings of Kuo, Long and Moon to make obvious the use of a wireless access point that is charged by mating with a connector in an optical bay of a computer. Appellant’s arguments and the Examiner’s response are similar to those discussed above, with the exception being the use of Kuo. The Examiner finds that Kuo teaches a portable, wireless battery powered peripheral that is recharged from a computer. Answer 12. We concur with this finding, and for reasons similar to those discussed above we find ample evidence that a skilled artisan would recognize that Kuo’s teaching of connecting and charging the portable battery powered wireless peripheral could be applied to any slot for the computer which connects a peripheral such as a bay which can also accommodate an optical drive. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection based upon Kuo, Long and Moon. Appeal 2010-005900 Application 11/830,678 7 Rejections based upon Johnson, Long and Moon Appellant’s arguments directed to these rejections have not persuaded us that the Examiner erred in finding the skilled artisan would combine the teachings of Johnson, Long and Moon to make obvious the use of a wireless access point that is charged by mating with a connector in an optical bay of a computer. Appellant’s arguments and the Examiner’s response are similar to those discussed above, with the exception being the use of Johnson. The Examiner finds that Johnson teaches a portable, wireless battery powered peripheral that is recharged from a computer. Answer 18. We concur with this finding and for reasons similar to those discussed above we find ample evidence that a skilled artisan would recognize that Johnson’s teaching of connecting and charging the portable battery powered wireless peripheral could be applied to any slot for the computer which connects a peripheral such as a bay which can also accommodate an optical drive. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection based upon Johnson, Long and Moon. DECISON The decision of the Examiner to reject claims 1, 5, 6, 8, 9, and 12 through 20 is affirmed. 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). AFFIRMED msc