Ex Parte Hoffer et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201310733033 (P.T.A.B. Feb. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CARY J. HOFFER and MEMPHIS-ZHIHONG YIN ____________ Appeal 2011-004366 Application 10/733,033 Technology Center 2600 ____________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004366 Application 10/733,033 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-19 (App. Br. 4). Claim 20 was canceled (id.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Exemplary claim 1 follows: 1. A portable computer, comprising: a base portion with a keyboard; an electronic display connected to the base portion; and a camera stored in the base portion of the portable computer, wherein the camera automatically powers on as the camera is ejected from the base portion of the portable computer. Claim 15 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement (Ans. 3-4). Claims 1-9, and 11-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ohnishi (U.S. 6,525,932 B1) in view of Yamane (U.S. 6,285,833 B1) (Ans. 4-7). Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Ohnishi in view of Yamane and Boyden (U.S. 2003/0112325 A1) (Ans. 7-8). Claims 15-19 stand rejected under 35 U.S.C. § 103(a) as being tmpatentable over Cipolla (U.S. 6,587,151 B1) in view of Murata (U.S. 5,691,766) (Ans. 8-10). Appeal 2011-004366 Application 10/733,033 3 Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Cipolla in view of Murata and Boyden (Ans. 10). Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Ohnishi in view of Yamane (Ans. 10-11). FACTUAL FINDINGS We adopt the Examiner’s factual findings as set forth in the Answer (Ans. 3, et seq.). ISSUES Appellants’ responses to the Examiner’s position present the following issues: 1. Did the Examiner err in concluding that claim 15 fails to comply with the enablement requirement? 2. Did the Examiner err in concluding that the combination of Ohnishi and Yamane teaches that a “camera automatically powers on as the camera is ejected from the base portion of the portable computer,” as recited in independent claim 1, and as similarly recited in independent claim 10? 3. Did the Examiner err in concluding that the combination of Cipolla and Murata teaches that “the camera is in a power-off state while enclosed inside the computer in the first position and automatically transitions to a power-on state as the camera is ejected and physically moves from the first position inside the computer to the second position being mechanically detached from the computer,” as recited in independent claim 15? Appeal 2011-004366 Application 10/733,033 4 ANALYSIS Enablement Rejection of Claim 15 The Examiner concluded that claim 15 does not meet the enablement requirement because there is no support in the Specification for a camera automatically transitioning “to a power on state as the camera is ejected and physically moves from the first position inside the computer to the second position being mechanically detached from the computer” (Ans. 3). Appellants argue that the Examiner erred because “[t]he specification and drawings clearly explain and show that a switch is used to transition the camera from a power-off state to a power-on state as the camera is being ejected from the portable electronic device” (App. Br. 10 (emphasis omitted)). We agree with Appellants. Appellants’ Specification states that a switch can be used to automatically power on the camera as it is being removed from the computer: A]n electronic switch 167 can be provided in the cavity 150. When the camera is ejected, the switch 167 can activate the camera to power-on. . . . When the camera is pushed and ejected out of the base portion 104, the switch 167 automatically activates the camera into the power-on mode (i.e., turns the camera on). Thus, a separate on/off switch on the camera or on the portable electronic device 100, for example, does not have to be manually activated by a user to turn power the camera "on" and "off." (Spec. 5, ¶ [0024]). That is, one of ordinary skill in the art would have been enabled by this disclosure to use an electronic switch to automatically power on the camera as it is being removed from the computer. Accordingly, we find error in the Examiner’s enablement rejection of claim 15. Appeal 2011-004366 Application 10/733,033 5 Obviousness Rejections of Claims 1-14 Appellants contend that the Examiner erred in rejecting independent claim 1 as obvious because Yamane does not disclose that “the camera automatically powers on ‘as the camera is ejected from the base portion of the portable computer’” as recited in claim 1 (App. Br. 12). In support of their contention, Appellants argue that “[p]ower to the camera in Yamane is not activated upon ejection of the camera. Instead, power to the camera in Yamane is activated when a pop-up flash on the camera itself is pushed” (id.). The Examiner concluded, however, that “using the teachings of Yamane, it would be obvious to one of ordinary skill in the art at the time invention was made to modify Ohnishi camera system to be powered on when in use (ejected position) and to be powered off when camera not in use (storage position) in order to conserve power used for powering devices such as camera and prevent computer components subject to heat produced by camera components by leaving the camera powered on when not in use or stored in the computer body” (Ans. 14). We agree with the Examiner’s conclusion and underlying findings of fact. Appellants’ arguments are not commensurate in scope with claim 1 because claim 1 does not require a camera to be automatically powered on as a result of being ejected or disconnected from the base portion of the portable computer; it instead only requires the camera to be automatically powered on “as the camera is ejected.” That is, the disputed limitation of claim 1 requires only that the camera be automatically powered on during the same time period that it is being ejected. Moreover, Appellants cannot Appeal 2011-004366 Application 10/733,033 6 show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citation omitted). Ohnishi discloses a notebook personal computer (“Notebook PC”) having an expansion bay slot that may include “a CCD camera” (col. 17, ll. 7-12, FIGs. 4-8). Yamane discloses that “[t]he pop-up detection switch 17 is combined with the main power switch of the camera, constructed so that the main power switch turns off when the pop-up detection switch 17 has detected the stored state of the pop-up strobe flash unit 4 and turns on when it has detected the popped-out state” (col. 4, ll. 51-56). Accordingly, a camera having a mechanism to automatically power on the camera when the flash is popped up as taught by Yamane, and stored in a notebook PC as taught by Ohnishi could be automatically powered on by popping the flash during the same time period that it is removed from the PC. In other words, the camera taught by the combination of Ohnishi and Yamane is capable of being used in the manner recited by claim 1. Therefore, we find no error in the Examiner’s obviousness rejection of independent claim 1 as well as claims 3-9 and 11-14 dependent therefrom because Appellants did not set forth any separate patentability arguments for those dependent claims (see App. Br. 12-13). We also sustain the Examiner’s rejection of claim 10 because Appellants set forth the same patentability arguments for that claim as they did for claim 1 (id. at 15-16). Appellants contend that the Examiner erred in rejecting claim 2 as obvious because Yamani does not teach “that the camera automatically powers off ‘when inserted into the base portion’” (App. Br. 13). Appellants argue that “[p]ower to the camera in Yamane is not de-activated upon Appeal 2011-004366 Application 10/733,033 7 ejection of the camera. Instead, power is de-activated when a pop-up flash on the camera itself is pushed” (id.). These arguments, however, are also not commensurate in scope with the claims because claim 2 does not require a camera to be automatically powered off as a result of being inserted or connected to the base portion of the portable computer; it instead only requires the camera to be powered off “when inserted into the base portion.” That is, the disputed limitation of claim 2 requires only that the camera be automatically powered off during the same time period that it is being inserted into the base. Moreover, a camera having a mechanism to power off the camera when the flash is pushed as taught by Yamane, and stored in a notebook PC as taught by Ohnishi could be automatically powered off by pushing the flash into the camera during the same time period that the camera is inserted into the PC. In other words, the camera taught by the combination of Ohnishi and Yamane is capable of being used in the manner recited by claim 2. Accordingly, we find no error in the Examiner’s rejection of claim 2. Obviousness Rejection of Claims 15-19 Appellants contend that the Examiner erred in rejecting independent claim 15 because Murata does not disclose that “the camera is in a power-off state while enclosed inside the computer in the first position and automatically transitions to a power-on state as the camera is ejected and physically moves from the first position inside the computer to the second position being mechanically detached from the computer” (App. Br. 14 (emphasis omitted)). In support of their contention, Appellants argue that “the camera in Murata is not transitioning from a power-off state to a power- Appeal 2011-004366 Application 10/733,033 8 on state. Instead, a built-in light transitions from the power-off to the power on state” (id.). The Examiner concluded, however, that “one of ordinary skill in the art at the time invention was made to modify Cipolla's system where camera is in power-off state when enclosed in a computer in the first position and automatically transitions to power on state as the camera is ejected and physically moves from the first position in the computer to the second position” (Ans. 17). We agree with the Examiner’s conclusion and underlying findings of fact. Appellants cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d at 426 (citation omitted). Cipolla discloses a camera enclosed in a computer in a first position, and mechanically detached but electrically coupled to the computer in a second position (FIG. 10, col. 5, ll. 49-66; col. 6, ll. 11-50). Murata discloses camera light being in a power-off state when enclosed in a camera and automatically transitioning to a power on state as the camera light is ejected from the camera (FIG. 9, col. 4, ll. 25- 38). We conclude, therefore, that the claim limitation of transitioning a camera to a power on state as it is mechanically detached from a computer is a combination of the familiar elements of storing a camera within a computer as taught by Cipolla and turning a device on as it is removed from another device as taught by Murata that would have yielded predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Therefore, we find no error in the Examiner’s obviousness rejection of independent claim 15 as well as claims 16-19 dependent therefrom because Appeal 2011-004366 Application 10/733,033 9 Appellants did not set forth any separate patentability arguments for those dependent claims (see App. Br. 15). DECISION We affirm the Examiner’s decision rejecting claims 1-19 as being unpatentable under 35 U.S.C. § 103(a). We reverse the Examiner’s decision rejecting claim 15 as failing to comply with the enablement requirement. 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 llw Copy with citationCopy as parenthetical citation