Ex Parte 7,120,462 et al

Patent Trial and Appeal Board

Mar 9, 2016

95002075 (P.T.A.B. Mar. 9, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,075 08/16/2012 7,120,462 3059.020REX2 9873
100766 7590 03/10/2016
NOVAK DRUCE + QUIGG LLP
1000 Louisiana Street, 53rd Floor
Houston, TX 77002
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/10/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

MOTOROLA MOBILITY LLC,
Requester, Respondent, and Cross-Appellant,

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner, Appellant, and Cross-Respondent.
____________________

Appeal 2015-007257
Reexamination Control 95/002,075
Patent 7,120,462 B2
Technology Center 3900
____________________

Before JOHN A. JEFFERY, DAVID M. KOHUT, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Intellectual Ventures II LLC (“Patent Owner”) appeals from the decision in
the Examiner’s Right of Appeal Notice (RAN), mailed October 9, 2013, rejecting
claims 1–3, 8–10, and 14–29 of U.S. Patent No. 7,120,462 B2 (the “’462 patent”).
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PO App. Br. 2.1 Motorola Mobility LLC (“Requester”) cross-appeals the
Examiner’s decision declining to reject certain claims. See 3PR App. Br. 3–8.

I. STATEMENT OF CASE
Requester made a request for inter partes reexamination (the “Request”) of
the ’462 patent, issued to Rajendra Kumar on October 10, 2006.
We have been informed that the ’462 patent was the subject of a district
court proceeding, namely Intellectual Ventures I LLC et al. v. Motorola Mobility,
LLC (now known as Motorola Mobility LLC), No. 11-cv-908-SLR (D. Del.). See
PO App. Br. 4. Additionally, the ’462 patent is also the subject of ex parte
reexamination control no. 90/013,204.
An oral hearing was conducted on January 13, 2016. The transcript of the
oral hearing will be made of record in due course.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315 (2002).
We affirm-in-part and, under 37 C.F.R. § 41.77(b), we enter a new ground of
rejection.

II.

1 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed
October 3, 2014 (“RAN”); (2) Patent Owner’s Corrected Appeal Brief, filed
December 31, 2014 (“PO App. Br.”); (3) Requester’s Respondent Brief, filed
January 30, 2015 (“3PR Resp. Br.”); (4) Patent Owner’s Rebuttal Brief, filed April
6, 2015 (“PO Reb. Br.”); (5) Requester’s Appeal Brief, filed December 30, 2014,
(3PR App. Br.), (6) Patent Owner’s Respondent Brief, filed January 30, 2015 (“PO
Resp. Br”); and (7) Requester’s Rebuttal Brief, filed April 3, 2015 (“3PR Reb.
Br.”).
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THE ’462 PATENT
The ’462 patent relates generally to portable processor-based handheld
devices that provide communications, organizer, and/or entertainment functions, as
well as portable processor-based devices that provide general computing
capabilities. ’462 patent, col. 1, ll. 17–25. Specifically, the invention is directed to
“systems that detachably mate a plurality of portable processor[-]based devices to
provide their combined functionality in an integrated structure.” ’462 patent, col.
1, ll. 26–30.
For example, as shown for example in Figure 1 below, a detachable handset
unit 20 may be docked into the docking display unit 30.

Figure 1 of the’462 Patent Depicting an Exemplary
Device of the Claim Invention
The ’462 patent describes that “[t]he detachable handset unit is in a smaller
housing that is dimensioned for handheld grasping, and is sized to be carried in a
packet like an average cell phone.” ’462 patent, col. 5, ll. 19–21. Further, the
“[d]ocking display unit 30 is shown as a clamshell style unit, including an auxiliary
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display 31, in the lid portion and an auxiliary keyboard 32 in the base portion,
facing each other in the closed position.” ’462 patent, col. 4, ll. 19–22.
Claim 1 is illustrative and reads as follows:
1. A portable processing device comprising:
a detachable handset unit sized for handheld grasping and
including a central processor and a plurality of first circuits, said
processor controlling the operation of said first circuits, and said first
circuits including at least a video interface, a communication interface
and a data input interface;
a portable docking display unit dimensioned substantially larger
than said detachable handset unit, said portable docking display unit
including a first display and a plurality of second circuits, said plurality
of second circuits not including a central processor and including a
video interface, and a data input interface, and wherein said central
processor controls the operation of at least one of said second circuits
and said first display when said detachable handset unit is docked with
said docking display unit;
and the docking display unit is fully operable only when the
detachable handset is docked thereto.
PO App. Br., Claims App’x.

III. REJECTIONS
A. Evidence Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Krisbergh US 5,138,649 Aug. 11, 1992
Kapp US 5,233,547 Aug. 3, 1993
Boyle US 5,323,291 June 21, 1994
Evans US 5,412,377 May 2, 1995
Kobayashi US 5,463,742 Oct. 31, 1995
Tao US 5,555,491 Sept. 10, 1996
Smith US 7,549,007 B1 June 16, 2009
Admitted Prior Art (“APA”)

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Toshiba America Information Systems Inc., Satellite Pro 430CDS/430CDT
Product Specifications, 1–3 (1998) (“TAIS”).

Patent Owner relies on the Declaration of Earl E. Swartzlander, Jr., dated
April 23, 2014 (“Swartzlander Decl.”), the Supplemental Declaration of Earl E.
Swartzlander, Jr., dated August 13, 2014 (“Swartzlander Decl. II”), and the
Declaration of Dr. Isaac Nassi, Ph. D, dated December 3, 2012 (“Nassi Decl.”).
Requester relies on the Declaration of Timothy J. Drabnik, dated May 22,
2014 (“Drabnik I”) and Declaration of Timothy J. Drabnik, dated September 12,
2014 (“Drabnik II”).

B. The Adopted Rejections2
The Examiner maintains the following rejections:
1. Claims 1–3, 14, 15, 22, and 24–29 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Boyle and Smith.
2. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boyle, Smith, and Toshiba.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Boyle, Smith, and Tao.
4. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boyle, Smith, and APA.
5. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Boyle, Smith, and Kapp.

2 See RAN 2–8 (outlining the adopted and not adopted rejections of the claims of
the ’462 patent and identifying when each rejection was entered or withdrawn
during this reexamination proceeding).
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6. Claims 19 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boyle, Smith, and Krisbergh.
7. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Boyle, Smith, Krisbergh, and Evans.
8. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Boyle, Smith, and APA or Boyle, Smith, Tao, and APA.
9. Claims 1, 14, 15, 22, and 24–29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi and Smith.
10. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi, Smith, and APA.
11. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Kobayashi, Smith, and Kapp.
12. Claims 19 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi, Smith, and Krisbergh.
13. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kobayashi, Smith, Krisbergh, and Evans.
14. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kobayashi, Smith, and APA or Kobayashi, Smith, Tao, and APA.
15. Claims 1, 14, 15, 22, and 24–29 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Boyle, Kobayashi, and Smith.
16. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boyle, Kobayashi, Smith, and APA.
17. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Boyle, Kobayashi, Smith, and Kapp.
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18. Claims 19 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boyle, Kobayashi, Smith, and Krisbergh.
19. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Boyle, Kobayashi, Smith, Krisbergh, and Evans.
20. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Boyle, Kobayashi, Smith, and APA or Boyle, Kobayashi, Smith,
Tao, and APA.

C. Proposed Rejections Not Adopted by the Examiner
1. Claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Boyle.
2. Claims 8 and 9 under 35 U.S.C. § 103(a) as anticipated by Boyle and
Toshiba.
3. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Boyle and
Tao.

IV. ISSUES ON APPEAL
Based on the contested findings and conclusions, the main issues in Patent
Owner’s appeal are:
1. Did the Examiner err in rejecting the claimed invention under 35
U.S.C. § 103(a) as unpatentable over the combination of Boyle and
Smith and further in combination with the additionally cited prior art?
2. Did the Examiner err in rejecting the claimed invention under 35
U.S.C. § 103(a) as unpatentable over the combination of Kobayashi
and Smith alone and further in combination with the additionally cited
prior art?
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3. Did the Examiner err in rejecting the claimed invention under 35
U.S.C. § 103(a) as unpatentable over Boyle, Kobayashi, and Smith?

Based on the contested findings and conclusions, the main issues in
Requester’s appeal are:
1. Did the Examiner err by withdrawing the rejection of claims 1 and 2
under 35 U.S.C. § 102 as anticipated by Boyle?
2. Did the Examiner err by withdrawing the rejection of claims 8 and 9
under 35 U.S.C. § 103(a) as unpatentable over Boyle and Toshiba?
3. Did the Examiner err by withdrawing the rejection of claim 10 under
35 U.S.C. § 103(a) as unpatentable over Boyle and Tao?

V. ANALYSIS
PATENT OWNER’S APPEAL
The Obviousness Rejection Based on Boyle and Smith
Patent Owner contends that Smith is non-analogous art because Smith is
neither in the same field of endeavor as the ’462 patent nor reasonably pertinent to
the subject matter of the ’462 patent. See PO App. Br. 12–18. More specifically,
Patent Owner maintains that “Smith is directed to the field of providing data
communications capabilities via a portable telephone” whereas the ’462 patent is
“directed to the field of providing computing or processing capabilities via portable
units.” PO App. Br. 12. Based on these differences, Patent Owner asserts that “a
person having ordinary skill in the art (“PHOSITA”) would not have considered
Smith to be in the same field of endeavor as the ’462 Patent.” Id.
Further, Patent Owner alleges that the Examiner’s analogous art analysis is
incomplete because the Examiner does not consider the structure and function of
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Smith compared to the ’462 invention, and instead, relies only on Smith and the
’462 patent being in the same search classification. PO App. Br. 13. Patent Owner
maintains that Smith’s structure and function are completely different from the
claimed invention. Namely, the structures and functions differ, according to the
Patent Owner, because the portable handset unit and the docking display unit in
Smith both include separate central processors, whereas claim 1 of the ’462 patent
recites that the docking display unit does not include a central processor. Thus,
Patent Owner maintains that a skilled artisan would not consider Smith and the
’462 patent to be within the same field of endeavor. PO App. Br. 13–14.
We find Patent Owner’s arguments unpersuasive. Notably, the Examiner
explains that both Smith and the ’462 patent are directed to portable processor
based devices and, more specifically, detachably mating a portable device to
another device to provide their combined functionality in an integrated structure.
RAN 16. Not only does the Examiner identify that both Smith and the ’462 patent
are within the same classification/search field, the Examiner also provides a
detailed comparison of both the structure and function of Smith and the ’462
patent. See RAN 16–17 (noting that Smith and the ’462 patent have similar
external structure and have similar functions “because both are directed to
detachably mating a portable device to another device to provide their combined
functionality in an integrated structure.”).
Likewise unavailing is Patent Owner’s contention that the rejection lacks
“any support from Smith for the phrase ‘thus providing combined functionality in
an integrated structure.’” PO Reply Br. 4. As Requester explains,
A prior art reference is not required to disclose every limitation of a
claimed invention to be in the same field of endeavor. Rather, the field
of endeavor is determined “by reference to explanations of the
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invention's subject matter in the patent application.” Factors such as
the breadth of the field described in the patent's background, prior art
described in the patent, similarities in structure and function of the
invention and prior art reference, and classifications of the patent and
prior art reference can be analyzed in determining whether a reference
is in the same field of endeavor.
3PR Resp. Br. 3–4. Smith may not expressly state that Smith’s detachable mating
the portable phone with the laptop provides combined functionality in an integrated
structure, but this is precisely the goal of Smith. See Smith, Abstract (noting that
the portable phone fits within the cavity and provides the additional function of
serving as the computer’s modem). Patent Owner additionally fails to present any
persuasive argument countering the Examiner’s finding of similar functionality.
As such, because Smith is in the same field of endeavor as the ’462 patent, Smith
is analogous art.
Nevertheless, we agree with the Patent Owner that the Examiner fails to
present a prima facie case of obviousness. Specifically, while we agree that
Smith’s laptop is a portable docking station with an integrated display, the
Examiner insufficiently explains why a skilled artisan at the time of the invention
would combine these features with the docking station of Boyle.
The Examiner determines that Boyle’s docking station is not portable and
does not include a first display and, then, relies on Smith for each of these features.
See RAN 69–70. The Examiner, in particular, reasons that,
The motivation is that the portable computer docking station of Smith
would add functionality, such as an integrated display in the docking
station of Boyle to make Boyle's docking station portable. Such
improvement of Boyle's device can be achieved by applying a known
technique (Smith's portable device integrated display functionality) to
a known device (Boyle's docking device) ready for improvement to
yield predictable results (Achieve portability). KSR v. Teleflex, 550
U.S. 398, 127 S. Ct. 1727 (2007).
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RAN 70; see also RAN 37 (stating that “Such portability would be desired, for
example, to have the docking station of Boyle be capable of connecting to other
handheld devices with small display or no display at a different location to take
advantage of the integrated display capability of Boyle's now modified docking
station.”).
The Examiner further explains:
[The ’462] Patent require[s] a portable docking display unit with an
integrated display, the only question is whether it would have been
obvious to a person of ordinary skill in the art at the relevant time to
have a portable docking station with an integrated display. It was. Smith
discloses a portable docking display unit that has an integrated display.
See Smith, Figure 9. Therefore, without much technical difficulty, a
person of ordinary skill in the art at the relevant time would have been
motivated to combine the integrated display of the portable docking
display unit of Smith with the docking station of Boyle to provide
additional portability to Boyle's docking station.
RAN 39. We understand the Examiner, then, to rely on “additional portability” to
be the reason why a skilled artisan would make the docking station of Boyle
portable, as well as why a skilled artisan would add an integrated display to the
docking station. 3
On the other hand, Patent Owner points out that the stated motivation in the
RAN “to allow the docking station to be portable is illogical” because “Boyle

33 We note that, within the section regarding the portable docking station, the
Examiner cites a list of cases, including, for example, Dystar Textilfarben GmbH
& Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, (Fed. Cir. 2006),
regarding the point that it is obvious to make something lighter and smaller. See
RAN 37–39. This section, however, appears to discuss reducing the size of
Boyle’s portable computer, as taught by Smith’s portable telephone, rather than
reducing size of the docking station. Id. (discussing reducing the size of the
Boyle’s handset unit, followed by the list of cases including Dystar).
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already discloses a fully-featured, portable computer in a laptop configuration.”
3PR Reb. Br. 15. According to Patent Owner, “if a user of the Boyle system truly
wished portability, the user would simply undock the portable computer of Boyle
and use it as the portable device without the docking station.” Id.
We agree with Patent Owner. Boyle is directed to a docking station for
portable computers. Boyle, col. 1, ll. 9–10. Boyle generally explains that docking
stations are stationary units that may provide additional data storage and display
capabilities for the portable computer. Boyle, col. 1, ll. 31–37. One advantage of
Boyle’s docking station is that the docking station is configured such that “a large
CRT display may be rested thereon without damaging the docking station or in any
way impeding its functioning.” Boyle, col. 2, ll. 40–42.
Smith, on the other hand, discloses a portable computer as a docking station
for a portable telephone. Smith, Fig. 9. Smith’s portable computer includes the
limitations absent from Boyle’s docking station, namely portability and an
integrated display, but these features are also already present in Boyle’s portable
computer, i.e. the component the Examiner relies on for the detachable handset
unit. The resulting combination of Smith and Boyle modifies Boyle’s docking
station to include the features of the device being docked into it.
We recognize that the “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly suggested
in any one or all of the references,” but “the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). We do not find that Boyle’s docking
station could not incorporate the portability and integrated display of Smith.
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Instead, we are simply not persuaded that the Examiner’s conclusory assertions of
“additional portability” sufficiently explains why a skilled artisan would make the
modification.
Moreover, even assuming that a skilled artisan would have recognized the
desirability of making Boyle’s docking station portable in view of Smith, we fail to
see how adding an integrated display, provides “additional portability” as
suggested by the Examiner. Namely, adding an integrated display would at least
increase the weight, if not also the size, of the docking station, and likely reduce
the additional display capabilities provided as compared to a larger separate
display.
Therefore, we reverse the rejection of claims 1–3, 14, 15, 22, and 24–29
based on Boyle and Smith.

The Obviousness Rejections Based on Boyle, Smith, and Additional Prior Art
Claims 8–10, 16–21, and 23 are rejected based on Boyle and Smith as well
as additionally cited prior art. This additional prior art, however, does not cure the
deficiencies of the combination of Boyle and Smith. Therefore, for the same
reasons as discussed above, we find error in the Examiner’s rejections of claims 8–
10, 16–21, and 23 based on the combination of Boyle, Smith, and the additionally-
cited prior art and reverse these rejections.

The Obviousness Rejections Based on Kobayashi and Smith
Based on the record before us, we are not persuaded that the Examiner erred
in rejecting claims 1, 14, 15, 22, and 24–29 under 35 U.S.C. § 103 as unpatentable
over Kobayashi and Smith.
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Patent Owner again contends that Smith is non-analogous art. See, e.g., PO
App. Br. 28. For the same reasons as discussed above, we find this argument
unavailing. Namely, we agree with the Examiner that Smith and the ’462 patent
are within the same field of endeavor and, thus, Smith is analogous art.
Next, Patent Owner asserts that the proposed combination of Kobayashi and
Smith is improper because Kobayashi’s personal processor module (PPM) and
Smith’s portable telephone are not analogous or equivalent and, thus, it would not
be obvious to combine them. PO App. Br. 29. More specifically, Patent Owner
alleges that
The PPM of Kobayashi, in contemporary terms, is akin to a USB drive
containing a complete, working operating system for operating a
computing device that the USB drive is plugged into. In contrast, the
portable telephone of Smith, in contemporary terms, is akin to a USB-
based cellular modem for a computing device. Therefore, as a
PHOSITA would not consider such devices analogous or equivalent, a
PHOSITA would not have considered modifying the PPM of
Kobayashi based on the non-equivalent and non-analogous portable
telephone of Smith.
PO App. Br. 29 (citing Swartzlander Decl. ¶ 32). Additionally, Patent Owner
alleges that “the RAN does not identify any teaching, suggestion, or motivation in
either Smith or Kobayashi that would lead a PHOSITA to consider adding features
from one type of device to a completely different type of device” and that the
Examiner’s proposed combination is an “impermissible exercise of hindsight. . . .”
PO App. Br. 29–30.
These arguments are unconvincing. First, Patent Owner fails to provide
sufficient persuasive support or argument explaining why a skilled artisan would
consider the teaching of Smith to be inapplicable to Kobayashi’s PPM. We also
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disagree that Kobayashi’s PPM and Smith’s portable telephone are two completely
different types of devices. To the contrary,
Both the PPM and the portable telephone have a microprocessor,
interface devices, memory such as RAM and ROM, and other circuitry.
See Kobayashi, Figure 2, 3:36-45; Smith, Figure 13; In addition, both
the PPM and the portable telephone are configured to be connected with
another device having a laptop form factor. See Kobayashi, Figures 1
and 2; Smith, Figure 9.
RAN 49; see also Drabnik II ¶ 40.
As the Examiner explains, it would have been readily apparent to a skilled
artisan that the display and interface functionality of the portable telephone of
Smith would add interactive functionality to Kobayashi’s PPM. RAN 48.
Additionally,
Further advantages are, as disclosed by the Requester, increase the
functionality of the PPM of Kobayashi thereby providing greater
convenience to a user, PPM to be independently operated such that the
user could access information stored in tile PPM without necessarily
being connected with a docking station and thus could provide greater
accessibility and convenience to a user and store additional information
in the PPM without the PPM being connected with a docking station
and thus could provide additional functionalities and more convenience
to a user.
RAN 48; see also Drabnik Decl. II ¶ 38–39. As such, the Examiner articulates
clear reasoning with rational underpinning to sufficiently support the combination
of Kobayashi and Smith.
Patent Owner also contends that Kobayashi teaches away from the
combination with Smith. PO App. Br. 30. In particular, Patent Owner contends
that adding a video interface and a data interface to allow the user to interact
directly with the PPM would require a significant number of components to be
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added to Kobayashi’s device that would increase the size and weight of the PPM of
Kobayashi. Id. According to Patent Owner,
Kobayashi explicitly discusses that the problem with using portable
computing devices is that they have reduced keyboard size and screens
with limited clarity and traveling users are frustrated with such
limitations. Thus, Kobayashi clearly disparages and discredits the use
of reduced size user interface elements in portable computing devices.
PO App. Br. 31 (citations omitted).
We disagree. Kobayashi describes a prior art portable desktop or notebook
computer, not less than letter size, including a reduced sized keyboard and screen
that may frustrate users. See Kobayashi, col. 1, ll. 49–60. That prior art device
though, does not include the advantages of Kobayashi’s invention, namely a PPM
that may be used with docking stations including docking stations with full sized
keyboards and screens. In other words, based on the collective teachings of
Kobayashi and Smith, a skilled artisan would have recognized that a reduced size
keyboard and display provides significant advantages, such as the option to
independently operate the computing device without a docking station, even
assuming the reduced size keyboard and display might be frustrating when it is the
only option to use the device. Notably, in the proposed combination of Kobayashi
and Smith, the modified PPM would operate either independently or with the
docking station.
Moreover, a skilled artisan would have understood at the time of the
invention that,
[T]he video interface and the data input interface of Smith's portable
telephone could have been added to Kobayashi's PPM without
substantially increasing its size or weight. . . . For example, in such a
combination, a person of skill in the art would have understood that the
modified PPM could still be portable, held in a user's hand, and fit
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within a cavity of a docking display unit because Smith explicitly
discloses a portable telephone with the components and capabilities.
RAN 44 (citing Drabik Decl. ¶ 41). As such, we are not persuaded that Kobayashi
teaches away from the combination with Smith.
We also agree with Requester that the Examiner rejected claim 1 by using a
modified portable telephone of Smith with Kobayashi’s docking stations. 3PR Resp.
Br. 15. Notably, the Examiner incorporates the Requester’s proposed rejection by
reference and, as such, adopts both proposed combinations. See RAN 44–47.
Patent Owner contends that this combination fails because
the portable telephone of Smith operates as nothing more than a modem
expansion card for the portable computer of Smith. Accordingly, even
if the PPM of Kobayashi was substituted for the portable telephone of
Smith, this combination would result in nothing more than the addition
of a modem to the docking station of Kobayashi.
PO Reb. Br. 17.
This argument, though, fails to consider the proposed combination. For
example, Requester identifies that
using the portable telephone of Smith (as modified if needed) with the
docking stations of Kobayashi (as modified if needed), would still
allow the user who needs several types of computers in several
locations to have one portable processing unit (e.g., the portable
telephone) and the software for the portable telephone. See Drabik
Dec., ¶43. Thus, in utilizing several types of docking stations with the
portable telephone of Smith (as modified if needed) the user would not
need additional processors and software for each docking station
because the portable telephone would have the processor and software.
See Drabik Dec., ¶43.
RAN 44–45; see also Drabnik II ¶ 44. Patent Owner fails to persuasively respond
to these findings and, therefore, we are unpersuaded of error.
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As such, we determine that claim 1 is unpatentable over Kobayashi and
Smith. Patent Owner presents no separate arguments of patentability for claims
14–29. See PO App. Br. 31. For the same reasons discussed above with respect to
claim 1, then, we determine that dependent claims 14–29 are also unpatentable.
Accordingly, based on the reasons set forth above and presented by the
Examiner, we affirm the rejections of claims 1 and 14–29 based on the
combination of Kobayashi and Smith alone and in combination with the
additionally cited prior art.

The Obviousness Rejections Based on Kobayashi, Smith, and Additional Prior Art
Patent Owner does not separately argue the remaining obviousness
rejections of claims 16–21 and 23 based on Kobayashi, Smith, and additionally
cited prior art. Therefore, for the reasons discussed above, we are not persuaded of
error and affirm these rejections.

The Obviousness Rejections Based on Boyle, Kobayashi, and Smith
Because our decision regarding the rejections based on Kobayashi and Smith
alone and in combination with additional prior art references is dispositive
regarding patentability of claims 1 and 14–29, we need not reach the merits of the
Examiner’s decision to reject these claims based on the additionally cited
combinations of Boyle, Kobayashi, and Smith alone and in combination with
additional prior art. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not
reaching other rejections after upholding an anticipation rejection); see also Beloit
Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s
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determination based on a single dispositive issue, and not reaching other issues not
decided by the lower tribunal).

NEW GROUNDS OF REJECTION
Claim 2
Although the Examiner rejected claim 1 over the combination of Kobayashi
and Smith, the Examiner remains silent as to whether the same combination would
render claim 2 obvious. Based on the record before us, claim 2 is unpatentable
under 35 U.S.C. § 103(a) over Kobayashi and Smith.
Claim 2 recites:
2. A device, as set forth in Claim 1, wherein control signals from the
central processor are coupled by means of a first electrical connector
provided on the detachable handset unit and said portable docking
display unit further includes a second electrical connector for
removably engaging said first electrical connector when said
detachable handset unit and said portable docking display unit are
docked.
PO App. Br., Claims App’x.
As Requester sets forth in the Request, Kobayashi teaches the limitation of
claim 2. See Request 20–21. In Kobayashi, as shown for example in Figures 21
and 22 reproduced below, the connector 22 on the exterior of the PPM 2 will
engage the connector 24 in the interior of the docking station 130. Kobayashi, col.
10, ll. 21–37, Figs. 21, 22.
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Figures 21 and 22 of Kobayashi Depicting a Connection Between the
PPM and Docking Station
Kobayashi explains that this creates a firm electrical connection between the
PPM 2 and the docking station 130. Kobayashi, col. 10, ll. 21–37, Figs. 21, 22.
Additionally, Kobayashi teaches, for example, that “[a]fter connecting to the
docking station, the connection control software [of the PPM] should check to see
whether it is necessary to execute a set up and customization operation for the
docking station.” Kobayashi, col. 11, ll. 5–8. These teachings at least implicitly
disclose that control signals from the central processor, in the PPM, are coupled
with the docking station. Accordingly, under 35 U.S.C. § 103(a), claim 2 is
unpatentable over the combination of Kobayashi and Smith.

Claim 3
The Examiner also remains silent as to whether the combination of
Kobayashi and Smith would render claim 3 obvious.4 Based on the record before

4 We note that the Examiner initially declined to adopt the proposed rejection of
claim 3 based on the combination of Kobayashi and Smith. See Decision Granting
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us, claim 3 is unpatentable under 35 U.S.C. § 103(a) over Kobayashi and Smith.
Claim 3 recites:
3. A device, as set forth in Claim 1, wherein said detachable handset
unit further includes at least one of a memory, a wireless
communication circuit, a first microphone, a first speaker, and a
power supply.
PO App. Br., Claims App’x.
Notably, claim 3 merely requires “at least one of” the listed components, and
thus, Kobayashi’s memory within the PPM (the detachable handset unit) satisfies
the limitations of claim 3. See Request 26. For example, as shown in Figure 2
reproduced below, Kobayashi’s PPM 2 includes a memory, e.g., CACHE 13,
CACHE/DRAM 11, DRAM 12, and MEMORY 19.

Inter Partes Reexamination, mailed October 1, 2012, 11. The Examiner’s
decision, though, depended upon Kobayashi’s alleged failure to disclose circuits
including at least a video interface and data input interface, as required by claim 1.
Id. at 10–11. Subsequently, in the Non-Final Action, mailed January 23, 2014, the
Examiner combined Smith with Kobayashi to reject claim 1, but never addressed
the limitations of claim 3. See Non-Final Action, 41–46.
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Figure 2 of Kobayashi Depicting the PPM
Including Examples of a Memory
Kobayashi, Figure 2; see also Figures 9, 11, and 14.
Kobayashi also explains, in one embodiment, that the PPM includes
components such as “an advanced processor with related logic, memory
(RAM/ROM/CASH MEMORY), a mass storage device such as a hard disc or flash
memory or both to contain the operating system graphic user interface, application
software and customized information personalized to the user.” Kobayashi, col. 3,
ll. 42–50; see also Kobayashi, col. 6, ll. 15–21 (“The personal processor module
itself will include typically a desirable processor 10 which may be an Intel Pentium
or the like, a dynamic memory and associated cache memory and local bus
controller 11, 8-64 megabits of dynamic memory 12, a cache static memory 13, a
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data path control unit 14, a mass memory device such as a hard disc drive 15 with
an appropriate control logic 16, and preferably a real time clock 17.”).
As Requester points out, Smith also teaches the limitations recited in claim
3. See Request 26–27. Smith’s portable telephone, for example, includes a
memory. See, e.g., Fig. 13 (depicting the portable telephone including
microprocessor 58 with RAM and ROM), col. 13, ll. 18–22 (describing that “[t]he
[portable telephone’s] microprocessor includes random access (RAM) memory,
read only (ROM) memory, and flash memory storage systems which contain the
control and data error programs necessary to adapt computer data for cellular
telephonic transmission.”).
Smith also discloses the additionally-listed components. As shown in
annotated Figure 13, reproduced below, Smith’s portable telephone includes a
transceiver T/R (i.e., a wireless communications circuit), a microphone and a
speaker (i.e., a first microphone and a first speaker), and a battery (i.e., a power
supply).
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Annotated Figure 13 of Smith Identifying the Memory, Transceiver,
Microphone, Speaker, and Battery of the Portable Telephone
Figure 13 (annotations added); see also Smith, col. 12, l. 41– col. 13, l. 3, col. 14,
ll. 43–48, 58–59, and col. 11, ll, 45–65. It would have been obvious to one of
ordinary skill in the art to combine the memory, wireless communication circuit,
microphone, speaker, and/or power supply of the cellular telephone 166 of Smith
with Kobayashi’s modified PPM at least because both devices are portable
computing devices and a skilled artisan would recognize that these additional
components would add functionality to the device. Accordingly, under 35 U.S.C.
§ 103(a), claim 3 is unpatentable over the combination of Kobayashi and Smith.

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Claim 8
The Examiner again remains silent as to whether the combination of
Kobayashi and Smith would render claim 8 obvious. Based on the record before
us, claim 8 is unpatentable under 35 U.S.C. § 103(a) over Kobayashi, Smith, and
Toshiba.
Claim 8 recites:
8. A device, as set forth in Claim 1, wherein said detachable handset
unit includes a connection for an external headphone.
PO App. Br., Claims App’x.
As Requester explains, at the time of the invention, it was well known to
include a connection for external headphones in portable devices. Request 28.
“For example, the Toshiba 430 CDT laptop computers, released in 1988, included
a headphone connector.” Request 28 (citing Toshiba, 2). We agree with Requester
that it would have been obvious to a skilled artisan at the time of the invention to
include Toshiba’s headphone connecter with Kobayashi’s modified PPM (as
discussed above) because the benefits of using the external headphone with an
Kobayashi’s independently operating computing device, which may be used with
multimedia applications, would have been readily apparent to a skilled artisan. Id.
(citing Kobayashi, col. 3, ll. 1–6).
Requester additionally notes that Toshiba’s laptop computer and
Kobayashi’s PPM are portable devices with computing functions and, particularity,
may be used for multimedia applications. Request 28. The combination, then, of
Toshiba’s headphone connector with Kobayashi’s modified PPM, is simply the use
of a known technique to improve a similar device in the same way, and, thus, is an
obvious variation. See KSR, 550 U.S. at 417. Accordingly, under 35 U.S.C. §
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103(a), claim 8 is unpatentable over the combination of Kobayashi, Smith, and
Toshiba.

Claim 9
The Examiner remains silent as to whether the combination of Kobayashi
and Smith would render claim 9 obvious. Based on the record before us, claim 9 is
unpatentable under 35 U.S.C. § 103(a) over Kobayashi, Smith, and Toshiba.
Claim 9 recites:
9. A device, as set forth in Claim 1, wherein said detachable handset
unit includes at least one of an optical transmitter and an optical
transceiver.
PO App. Br., Claims App’x.
Similarly to claim 8, Requester identifies that it was well known at the time
of the invention to include either an optical transmitter or an optical transceiver in
portable computing devices. Request 29. “For example, the Toshiba
430CDT and 4020CDT laptop computers, released in 1998, included an infrared
port.” Id. (citing Toshiba, 2). We agree with Requester that it would have been
obvious to a skilled artisan at the time of the invention to include Toshiba’s
infrared port with Kobayashi’s modified PPM because a skilled artisan would
recognize the additional functionality that an infrared port would provide to
Kobayashi’s independently operating computing device. For example, Kobayashi
discloses the desirability of using the PPM for additional features such as a video
camera and a digitizer. Id. (citing Kobayashi, col. 3, ll. 1–6).
Requester additionally notes that Toshiba’s laptop computer and
Kobayashi’s PPM are portable devices with similar computing functions.
Request 29. The combination of Toshiba’s infrared with Kobayashi’s modified
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PPM, is simply the use of a known technique to improve a similar device in the
same way, and, thus, is an obvious variation. See KSR, 550 U.S. at 417.
Accordingly, under 35 U.S.C. § 103(a), claim 9 is unpatentable over the
combination of Kobayashi, Smith, and Toshiba.

Claim 10
The Examiner remains silent as to whether the combination of Kobayashi
and Smith would render claim 10 obvious. Based on the record before us, claim 10
is unpatentable under 35 U.S.C. § 103(a) over Kobayashi, Smith, and Tao.
Claim 10 recites:
10. A device, as set forth in Claim 1, wherein said detachable handset
unit includes a Global Positioning System receiver.
PO App. Br., Claims App’x.
Tao teaches that “it was known [at the time of the invention] that GPS
receivers are peripheral devices suitable for use with portable computers.” Request
30 (citing Tao, col. 8, ll. 2–4). As Requester explains,
It would have been obvious to one of ordinary skill in the art to combine
a GPS receiver of Tao with the [Kobayashi’s modified PPM] at least
because the PPM is a portable computing device and Tao discloses that
GPS receivers are suitable for use with portable computers.
Id. See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Requester additionally points out that “Kobayashi describes that the PPM
can be used in multimedia applications and that the PPM can be combined with
additional peripheral features such as a video camera or digitizer.” Request 30. In
other words, Kobayashi generally teaches an interest at the time of the invention to
expand the functions of the PPM. A skilled artisan, then, would have recognized
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the advantage of incorporating the additional functionality of a GPS receiver
within Kobayashi’s PPM.
Accordingly, under 35 U.S.C. § 103(a), claim 10 is unpatentable over the
combination of Kobayashi, Smith, and Tao.

REQUESTER’S CROSS APPEAL
Based on the record before us, we are not persuaded that the Examiner erred
in deciding not to adopt the proposed anticipation rejection based on Boyle.
Requester alleges that the Examiner erred in requiring that the recited
display be integrated with the “portable docking display unit.” 3PR App. Br. 5–7.
In other words, according to the Examiner, the display of the portable docking
display unit must be part of the docking station and not merely connected to the
docking station, as taught, for example, by Boyle. Requester contends, though,
that this interpretation improperly imputes a preferred embodiment into the claim.
See 3PR App. Br. 6.
Requester’s argument, however, fails to consider the express language of the
claim, namely a “portable docking display unit.” See, e.g., 3PR App. Br. 6.
Notably, the unit itself is a docking display unit. A skilled artisan would
understand this language to mean that the display is an integral part of the docking
unit. The plain language of the claim, then, supports the Examiner’s interpretation.
Additionally, as the Examiner points out, the claim expressly states that the
docking display unit includes a display.
The Specification is also consistent with the Examiner’s construction. For
example, Figure 2, reproduced below, depicts the auxiliary display 31 as an
integrated component of the docking display unit 30.
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The ’462 patent describes that “[d]ocking display unit 30 is shown as a clamshell
style unit, including an auxiliary display 31, in the lid portion and an auxiliary
keyboard 32 in the base portion, facing each other in the closed position.” ’462
patent, col. 4, ll. 19–22. As such, because both the claim language and the
Specification support the Examiner’s interpretation, we are not persuaded of error.
Similarly unavailing is Requester’s argument that Boyle discloses an
integrated display. See, e.g., 3PR App. Br. 7. Requester, in particular relies on
column 13, lines 5–10 of Boyle, which disclose that the purpose of the docking
station is to add a display and other features, such as increased video capabilities to
the portable computer. 3PR App. Br. 7 (citing Boyle, col. 13, ll. 5–10). Requester
also concludes that “a person of skill in the art at the time reading Boyle would
have understood that a docking station could offer increased video capabilities to a
portable computer by having an integrated display in the docking station.” Id.
The embodiment discussed at column 13, lines 5–10 is depicted in Figure
21, an annotated copy is reproduced below.
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Figure 21 of Boyle Depicting an Exemplary Docking Station Embodiment
As shown in Figure 21, and contrary to Requester’s assertions, Boyle’s
docking unit does not include a display, but instead has a video input 734, i.e. cable
connection Video DB-15. The corresponding description relied upon by Requester
does not demonstrate that the display is integrated with the docking unit, but rather
describes the advantages of using a docking station. In other words, by having a
display connected to the docking station and then docking a portable computer in
the station, increased video capabilities may be provided to the user. Therefore,
we are not persuaded that Boyle discloses a docking display unit, as required by
claim 1.
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Accordingly, for the reasons set forth above and by the Examiner, we affirm
the Examiner’s decision not to adopt the anticipation rejection based on Boyle.
For the same reasons, we also affirm the Examiner’s decision not to adopt the
rejections with respect to dependent claims 2, 8, 9, and 10.

VI. CONCLUSION
We reverse the Examiner’s decision to reject claims 1–3, 8–10, and 14–29
based on the combination of Boyle and Smith alone and in combination with the
additionally cited prior art references.
We sustain the Examiner’s decision to reject claims 1 and 14–29 based on
the combination of Kobayashi and Smith alone and in combination with the
additionally cited prior art references.
We sustain the Examiner’s decision not to reject claims 1, 2, and 8–10 based
on Boyle alone and in combination with the additionally cited prior art references.
We enter the following NEW GROUNDS OF REJECTION under 37 C.F.R.
§ 41.77(b):
1. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi and Smith.
2. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi, Smith, and Toshiba.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Kobayashi, Smith, and Tao.

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VII. TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Correspondingly, no portion of the decision is final for purposes of
judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate, however, the Board may elect to defer issuing any decision on such
request for rehearing until such time that a final decision on appeal has been issued
by the Board. For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)–(g). The decision may become final after it has returned to the Board.
37 C.F.R. § 41.77(f).
Section 41.77(b) of Title 37 of the Code of Federal Regulations also
provides that the Owner, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to the
new grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must
be either an amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record . . . .
Any request to reopen prosecution before the examiner under 37 C.F.R.
§ 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a
request to reopen prosecution is limited to issues raised by the new ground(s) of
rejection entered by the Board. A request to reopen prosecution that includes issues
other than those raised by the new ground(s) is unlikely to be granted.
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Furthermore, should the Owner seek to substitute claims, there is a presumption
that only one substitute claim would be needed to replace a cancelled claim.
A requester may file comments in reply to Owner response. 37 C.F.R.
§ 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in
scope to the issues raised by the Board’s opinion reflecting its decision to reject the
claims and the Owner’s response under paragraph 37 C.F.R. § 41.77(b)(1). A
newly proposed rejection is not permitted as a matter of right. A newly proposed
rejection may be appropriate if it is presented to address an amendment and/or new
evidence properly submitted by the Owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and why it
could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all
Owner responses and requester comments, is required.
The Examiner, after the Board’s entry of Owner response and Requester
comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the
Board’s rejection is maintained or has been overcome. The proceeding will then be
returned to the Board together with any comments and reply submitted by the
Owner and/or Requester under 37 C.F.R. § 41.77(e) for reconsideration and
issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.77(g).

AFFIRMED-IN-PART
37 C.F.R. § 41.77(b)

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FOR PATENT OWNER:

NOVAK DRUCE & QUIGG LLP
1000 Louisiana Street
53rd Floor
Houston, TX 77002

FOR THIRD-PARTY REQUESTER:

KILPATRICK TOWNSEND & STOCKTON LLP
Two Embarcadero Center
Eight Floor
San Francisco, CA 94111-3834