Ex Parte DeLuga et al

Board of Patent Appeals and Interferences

May 25, 2007

10965055 (B.P.A.I. May. 25, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.
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Appeal 2007-1106
Application 10/965,055
Technology Center 2800
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Decided: 25 May 2007
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Before RICHARD TORCZON, SALLY G. LANE, and SALLY C.
MEDLEY, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
INTRODUCTION
The claims on appeal relate generally to a battery for a portable
electronic device, where the battery housing does not impede docking of the
device to a docking station. The examiner has rejected claim 22 as
anticipated and claims 1-10, 18-21, and 23 as having been obvious. The
appellant (HP) seeks review of the rejections. We reverse the anticipation
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rejection, affirm the obviousness rejections, and enter a new ground of
rejection for claim 22.
BACKGROUND
The claimed invention is simple. Portable electronic devices, such as
notebook computers, typically run on batteries. Extending battery life
typically requires use of a larger battery, with a housing that may project out
of the device. Many portable electronic devices are used with docking
stations. A projecting battery housing might interfere with the docking. To
resolve this problem, HP has modified the battery housing to include a
recess that avoids interfering with docking.
The examiner relies on one reference1 (Shin) for the
anticipation of claim 22. Claims 1-10, 18-21, and 23 stand rejected as
having been obvious over combinations of Shin with three other references2
(Fuchida, Ohnishi, and Fukushima). There are three independent claims
other than claim 22 (claims 1, 18, and 21). Claims 1 and 18 are rejected
over Shin and Fuchida,3 while claim 21 is rejected over Shin, Fuchida, and

1 T. Shin & M. Ohnishi, "Portable computer equipped with add-on battery",
U.S. Patent 6,563,702 B1 (granted 13 May 2003).
2 H. Fuchida, "Function-expansion device detachably connecting electronic
equipment", U.S. Patent 6,742,070 B2 (granted 25 May 2004);
M. Ohnishi, "Battery unit and electronic apparatus", U.S. Patent 6,617,063
B1 (granted 9 September 2003); and
A. Fukushima, I. Miwa & N. Kawashima, "Portable computer docking
apparatus including a key mechanism controlling a power supply and a
locking mechanism", U.S. Patent 5,450,271 (granted 12 September 1995).
3 Answer 4-7.
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Fukushima.4 The examiner has withdrawn the rejection against claims 11-
17.5
ANTICIPATION
Claim 22 is written in means-plus-function format as follows:6
22. A battery, comprising:
means for providing power;
means for housing the means for providing power;
means for attaching the means for housing to a bottom
surface of a notebook computer; and
means, associated with the means for housing, for
receiving at least a portion of the [sic, a] docking station when
the means for housing is attached to the notebook computer and
the notebook computer is attached to the docking station.
The examiner urges7 that claim 22 is anticipated because Shin shows
a battery 4, which the examiner notes inherently contains cells for providing
power, housing for the cells (the surfaces of the battery), attaching means 46,
and means for receiving a portion of the docking station, which the examiner
associates with the bottom of the battery 4.
HP contests the examiner's construction of the receiving means.8
Specifically, HP points to Figures 1-3 of the specification for the

4 Answer 8-9.
5 Answer 2.
6 All claim language is taken from the appendix to the Appeal Brief (Appeal
Br.). The portions of the agency record cited in this opinion may be viewed
via the Patent Application Information and Retrieval system.
7 Answer 3-4.
8 Appeal Br. 5-6.
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corresponding structure to the receiving means.9 We note that all three
figures show a U-shaped housing that wraps around a protrusion on the
docking structure shown in Figure 3. We further note, however, that HP's
specification contemplates other geometries, including an L-shape, an arc, a
W-shape, or any other shape with a recess 104 for receiving the docking
station.
Our claim construction for the contested receiving means is
constrained by 35 U.S.C. 112(6), which limits the breadth of the receiving
means to the corresponding structure in the disclosure (and equivalents). As
is too often the case with means-plus-function limitations, neither the
applicant nor the examiner has provided much guidance on the scope of the
corresponding structures and equivalents. The receiving means is not
limited to the U-shape shown in HP's figures, but it does require a shape
with a recess into which some portion of the docking station fits during
docking. While Us, Ls, Ws, and arcs are specifically disclosed, other
recessed shapes (As, Bs, Cs, etc.) would be equivalent.
Shin on its face does not anticipate a properly construed claim 22. In
Shin, the recess is in the docking station, not the battery housing. Although
the examiner elsewhere characterizes the housing as having an L-shape,10
even if true the L-shape is formed to receive the computer, not the docking
station. Since Shin does not teach a limitation of the claim, the anticipation
rejection of claim 22 is reversed.

9 Appeal Br. 6.
10 Answer 6.
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OBVIOUSNESS
In analyzing obviousness, the scope and content of the prior art must
be determined, the differences between the prior art and the claims
ascertained, and the ordinary level of skill in the art resolved. Objective
evidence of the circumstances surrounding the origin of the claimed subject
matter (so-called secondary considerations) may also be relevant. Such
secondary considerations guard against the employment of impermissible
hindsight.11
Claim 1 defines the invention broadly as follows:
1. A battery for a dockable electronic device, the battery
comprising:
a housing having a recess;
at least one battery cell disposed in the housing;
wherein the recess of the housing is operable to receive a
docking station platform when the dockable electronic device is
docked at the docking station while the housing is coupled to a
bottom surface of the dockable electronic device.
Claim 18 defines the invention more narrowly in terms of three
members as follows:
18. A housing for a battery for a dockable electronic device,
the housing comprising:
a transverse member having opposite ends;

11 Graham v. John Deere Co., 383 U.S. 1, 36, 148 USPQ 459, 474 (1966),
cited with approval in KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
1385 (2007). The record on appeal does not contain objective evidence of
secondary considerations.
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a first lateral member that extends from one end of the
transverse member;
a second lateral member that extends from another end of
the transverse member; and
wherein the transverse and lateral members so positioned
present a recess positionable to receive at least a portion of a
docking station platform further wherein at least one of the
members is constructed to be able to hold at least one battery
therein.
Claim 21 defines the invention in terms of a method for charging the
battery as follows:
21. A method for charging a battery, the method comprising:
attaching a dockable electronic device to a docking
station while a battery is attached to a bottom surface of the
notebook computer, at least a portion of a docking station
platform is [sic, being?] positionable within a recess in the
battery; and
providing power to the battery from the docking station
through the dockable electronic device such that the battery is
charged.
Scope and content of the prior art
Shin teaches a battery housing 4 protruding from a portable
computer 1. The computer has a variety of recesses 20, 21 for engaging the
housing. A docking station 6, for use with the computer, also has a
recess 61 for accommodating the battery housing.
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Fuchida teaches a notebook computer 101, docking stations 102, 104,
and a battery housing 103. The battery housing as illustrated has an L-shape
that fits into a corresponding recess 145, 202 in a docking station 102, 104
(respectively). The battery housing also fits into a corresponding recess 141
on the bottom of the computer. The battery pack is only installed in one
component at a time, although it can provide power to both the docking
station and the computer when installed in the docking station.12
Fukushima teaches a docking station 1 with a power supply 60 that
provides power for charging a battery in a portable computer 22. Ohnishi
shows the use of a six-cell battery13 to supply higher performance, long-term
power.14
Differences
For claims 1-1015 and 21,16 HP notes that Shin does not teach a recess
in the battery housing for receiving a portion of the docking station.17 HP
further argues that the battery housing of Fuchida does not have a recess for
receiving a portion of the docking station.18 While Shin does not have a

12 Fuchida 6:25-29 and 8:1-5.
13 Ohnishi Fig. 6 and 6:18-34.
14 Ohnishi 2:3-10.
15 Although the basis for rejecting claim 5 is slightly different, in that it
relies on Ohnishi for the showing of a six-cell battery, HP relies on its
arguments for claim 1 and does not otherwise separately argue for the
patentability of claim 5. Appeal Br. 10.
16 Although claim 21 is a method claim, and the rejection additionally relies
on Fukushima to show battery charging, HP relies on its "recess" arguments
and does not separately argument for the patentability of claim 21. Appeal
Br. 10.
17 Appeal Br. 7-8.
18 Appeal Br. 8.
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recess, Fuchida plainly does. The L-shaped battery housing 103 of Fuchida
has an indentation (hence the L-shape) that corresponds to a projection on
the docking stations 102, 104.
For claims 18-20, HP argues that none of the references teach a
battery housing with a transverse member and with first and second lateral
members that define a recess.19 The examiner construes "member" very
broadly to include the edges of the battery housing.20 Consequently, an
orthogonal structure, like the battery in Fuchida, will have a transverse edge
connecting lateral edges. HP does not point to a specific definition of
"member", but consistently uses the term to mean a solid structural
element.21 The examiner's construction of "member" is broader than would
be reasonable to one skilled in the art in view of the specification.
Moreover, HP's use in the specification comports with the ordinary meaning
of member as a constituent part rather than a defining boundary.
Nevertheless, HP's use of member in the specification does not compel us to
read the specific proportions of the drawings into the claim limitations.
Fuchida's battery housing necessarily has a transverse member connected at
one end to a single lateral member to form an L-shape. Fuchida does not
teach a second lateral member.
For claim 23, which depends from claim 22 with the further limitation
of means to provide power to charge the battery, HP relies on the examiner's

19 Appeal Br. 9-10.
20 Answer 5.
21 E.g., Specification at ¶¶0013-0014, items 106, 108, and 110.
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failure to show a receiving means in the context of the anticipation
rejection.22
Level of skill in the art
The skill artisan understood that a battery protruding from a laptop
computer could pose difficulties when docking the computer to a docking
station. Shin shows the problem being resolved by adapting the docking
station to accommodate the battery. Those skilled in the art would also have
been familiar with adaptations of both battery housing and the recess such as
the L-shape of both the battery housing and the various recesses (in both the
computer and the docking stations) of Fuchida.
Those skilled in the art understood that batteries and recesses need to
be mutually adapted to fit each other. In Shin the relative conformations of
battery and recess are simple block shapes, but in Fuchida the battery and
recesses are L-shaped such that each wraps around the other.
Those skilled in the art would have appreciated the need to vary the
number of cells in the battery to meet performance and duration goals,
specifically including the six-cell battery shown in Ohnishi. Similarly, those
skilled in the art would have appreciated the convenience of using the
docking station to recharge the laptop battery as shown in Fukushima.
Synthesis of findings
The art, particularly in Shin, shows an appreciation of the problem:
getting a protruding battery to work with a docking station. Fuchida shows
that irregularly shaped laptop computer batteries were in use. If the

22 HP does not otherwise separately argue the patentability of claim 23.
Appeal Br. 11.
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protruding battery of Shin had an irregular shape like Fuchida's, then Shin's
recess would also need an irregular shape. The breadth of "receiving" as
used in HP's claims and disclosure is sufficient to encompass the indentation
in the L-shaped battery of Fuchida receiving the protrusion of the docking
station into the docking station recess to form a corresponding L-shaped
recess.
More broadly, those skilled in the art understood the interplay
between docking station and protruding battery to avoid physical obstruction
of docking. The problem immediately suggests three solutions. First, the
modification of the docking station to receive the protruding battery (as
shown in Shin). Second, the modification of the battery to receive the
docking station. Third, the modification of each to accommodate the other
(as suggested by the shapes in Fuchida). Note that the claims encompass
both the second and third alternatives,23 that is, they do not exclude
embodiments in which both the battery housing and the docking station have
corresponding protrusions and recesses.
The reason for combining the teachings of the references need not be
the same as the ones that inspired the applicant.24 Fuchida uses a battery
with an interlocking shape, presumably to ensure proper orientation. If
Fuchida's battery were bulkier to provide additional power as Shin teaches,
the need for proper orientation would still exist. In the case of orthogonal
interlocking members, more members would further constrain the possible

23 Indeed, the protruding docking portion of HP's Figure 3 appears to be
custom-fitted to the recess in the battery housing.
24 In re Dillon, 919 F.2d 688, 692-94, 16 USPQ2d 1897, 1901-02 (Fed. Cir.
1990) (en banc).
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orientations. Hence, a U-shape might be more constraining than an L-shape,
and an E-shape might be even more constraining.
The interlocking features on the computer, battery, and docking
station are familiar in the art and work in predictable ways. The problem of
accommodating bulky batteries to docking stations was also known. Solving
both problems in a single system would have been obvious for the
advantages that each solution confers.
NEW GROUND OF REJECTION
Although we have concluded that claim 22 is not anticipated, based on
our analysis of the content and skill in the art, claim 22 would have been
obvious in view of Shin and Fuchida. The system of Shin could be modified
to provide an L-shaped interlocking battery housing as in Fuchida for the
reasons discussed above. The resulting battery would have power means
(inherent in a battery), a housing (shown in both references) means for
attaching to the bottom of the computer (shown at least in Shin), and means
for receiving a portion of the docking station (the portion within the L-
shaped interlock).
17 AFFIRMED-IN-PART

sd

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Hewlett Packard Company
P.O. Box 272400
3404 E. Harmony Road
Intellectual Property Administration
Fort Collins, CO 80527-2400
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