Ex Parte DeIuliis et al

Patent Trial and Appeal Board

Sep 25, 2018

13549192 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/549, 192 07/13/2012 Daniele Deluliis
65656 7590 09/27/2018
KILPATRICK TOWNSEND & STOCKTONLLP/Apple
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
90911-P2730USC7-844120 2140
EXAMINER
CA V ALLARI, DANIEL J
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIELE DELULIIS, ANDREW BERT HODGE,
JEFFREY L. ROBBIN, STANLEY CARL NG,
ERIC W. ANDERSON, and ANTHONY M. F ADELL
Appeal 2018-001820
Application 13/549,192
Technology Center 2800
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision rejecting claims 21-39 under 35 U.S.C. § 103(a) as
1 Our decision refers to the Specification ("Spec.") filed July 13, 2012, the
Examiner's Non-Final Office Action (''Non-Final") dated June 16, 2016,
Appellants' Appeal Brief ("Br.") filed May 9, 2017, and the Examiner's
Answer ("Ans.") dated October 6, 2017.
2 Appellants identify Apple, Inc. as the real party in interest (Br. 3).
Appeal 2018-001820
Application 13/549,192
unpatentable over Dalton3 in view of Philips, 4 Tsai, 5 Hahn, 6 and Lee. 7 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to methods for powering and/or charging
peripheral devices through a data transmission line (Spec. ,r 2).
Claim 21, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
21. A method comprising:
receiving a first electrical power at a transformer of a power
adapter through a plug positioned on a housing, the plug having
prongs configured for insertion into slots of an electrical outlet;
converting the first electrical power into a second electrical
power by the transformer, wherein the transformer is enclosed in the
housing; and
providing the second electrical power through a data port
disposed within the housing, the data port having data contacts, a
ground contact and a power contact, the power contact being
electrically coupled to the transformer, the data port corresponding to
an IEEE 1394 port or a Universal Serial Bus port, wherein the data
contacts are dummy contacts that are not used for transmitting data,
and wherein when the second electrical power is provided to a device,
the second electrical power facilitates powering or charging the
device.
3 Dalton, US 6,152,778, issued November 28, 2000.
4 Philips et al., US 2002/0055288 Al, published May 9, 2002 ("Philips").
5 Tsai, US 6,283,789 Bl, issued September 4, 2001 ("Tsai").
6 Hahn, US 5,648,712, issued July 15, 1997.
7 Lee et al., US 6,111,772, issued August 29, 2000 ("Lee").
2
Appeal 2018-001820
Application 13/549,192
Remaining independent claims 30 and 36 similarly recite methods for
converting first electrical power into a second electrical power, wherein the
second electrical power is provided through a data port disposed within the
housing.
ANALYSIS
After review of the opposing positions articulated by Appellants and
the Examiner, the applied prior art, and Appellants' claims and Specification
disclosures, we determine that the Appellants' arguments are insufficient to
identify reversible error in the Examiner's obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). A preponderance of the
evidence supports the Examiner's findings of fact and conclusions of law
with respect to the prima facie case of obviousness. Accordingly, we affirm
the stated obviousness rejection for substantially the fact findings and the
reasons set forth by the Examiner in the Examiner's Answer and the Non-
Final Office Action, which we adopt as our own. We offer the following for
emphasis only.
The Examiner finds Dalton teaches a method for providing electrical
power to a device substantially as recited in claim 21, except for, among
other things, a data port corresponding to an IEEE 1394 port or a Universal
Serial Bus port disposed within the housing (Non-Final 2-3). With regard to
the type of data port, the Examiner finds Tsai discloses IEEE 1394 ports and
USB ports were known data port types in the art (id. at 5). The Examiner
concludes that it would have been obvious to change or substitute one type
of port, either IEEE 1394 or USB, for Dalton's RS-232 data port type,
because each of these known data port types include data contacts, a ground
3
Appeal 2018-001820
Application 13/549,192
contact, and a power contact and the use of convenient standardized ports
would allow users to connect with devices having corresponding data ports
(id.).
In addition, the Examiner finds Lee discloses an electrical power
connector having a power port disposed within the housing of the connector
(Non-Final 4). The Examiner concludes that it would have been obvious to
incorporate Dalton's data port within the housing in place of the cord
connection between the port and the housing as an alternative port
configuration offering a unified and simplified body design as taught in Lee
(id.).
Appellants present three primary arguments against the obviousness
rejection of the claims: 1) that the prior art fails to teach a data port disposed
within the housing; 2) that there is no motivation to combine Dalton and
Lee; and 3) that Tsai teaches away from its combination with any of the
cited references (Br. 10-13). Regarding the first argument, Appellants assert
that Lee teaches housing 1 having receptacle 13 which provides low or high
voltage AC power (id. at 10-11). Appellants argue that Lee fails to teach
that receptacle 13 is a data port, urging that a power port is a port that
enables the supply and receipt of power, whereas a data port is a port
capable of transmitting and receiving data (id. at 11).
Regarding the second argument, Appellants contend that the
motivation for providing a data port in a housing, e.g., as in the present
claims, may be different than the motivation for providing a power port
within a housing, as in Lee (Br. 11 ). Appellants argue that the Examiner
fails to explain why the ordinary artisan would modify a power port within a
housing, as in Lee, to instead be a data port within a housing, as presently
4
Appeal 2018-001820
Application 13/549,192
claimed (id.). As such, Appellants urge that modifying Dalton in view of
Lee would result in an electrical port being provided within the housing (id.
at 11-12). In addition, Appellants contend that modifying Dalton such that
the data port 300 is in a housing of the power supply 210 would locate the
peripheral device 400 immediately adjacent the wall outlet which would be
impractical, if not impossible, to implement (id. at 12).
With regard to the third argument, Appellants contend that "the
objective of Tsai stems from the premise that it is not always 'desirable' to
receive power from a wall socket through a power supply, e.g., a power
adapter" (Br. 13). Appellants assert that Tsai teaches using two cables in
tandem to provide enough power to a device so as to avoid having to draw
power from a wall socket via a power adapter (id.). Therefore, Appellants
argue that it would require impermissible hindsight to render the claimed
invention obvious in light of Tsai and the other cited references (id.).
These arguments are not persuasive of reversible error. As the
Examiner finds (Ans. 4), the primary difference between Appellant's
claimed invention and that of Dalton lies in the location for the data port.
Dalton teaches data port 300 is connected to housing 210 via cable 212
(Dalton, Fig. 4 ), rather than disposing the port within the housing as recited
in the claims. However, we note that Dalton's data port and Appellants'
data port are both dummy data ports that are actually power ports because
both provide electrical power but have dummy data contacts (see Ans. 4).
As there is no dispute that Lee teaches a power port within the housing, the
ordinary artisan would have found it obvious to modify Dalton's device by
relocating the dummy data port within the housing as a known alternative
location for providing a power port. Appellants' argument that the skilled
5
Appeal 2018-001820
Application 13/549,192
artisan would instead modify Dalton to provide a power port only within the
housing fails to account for Dalton's teaching to provide a power port as a
dummy data port in order to minimize the number of connectors and cables
on a portable device (Dalton 1 :28-30). Moreover, doing so would not
eliminate the possibility of using a cable from dummy data port in the
housing to the portable device, but would eliminate the need for separate
data and power connectors and cables.
With respect to Tsai, we note that Appellants fail to direct our
attention to any disclosure therein that discourages the ordinary artisan from
following the path set out therein or otherwise leads that person in a
direction divergent from the path taken by Appellants. See In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994). Further, Tsai's teaching was merely
relied on in the Examiner's rejection to establish that IEEE 1394 and USB
data ports were alternative data port types known to those of ordinary skill in
the art. Tsai further teaches that these data ports can be used to provide
electrical power (Tsai 4:22-27). Tsai's teaching that a second cable may be
provided if the device needs more power that can be supplied with a USB or
IEEE 1394 cable is not relevant in situations where the power supplied to the
device by a single cable is sufficient. Thus, we are not persuaded that Tsai
teaches away from the modification of Dalton's data port from RS-232 to
either IEEE 1394 or USB, or that such a modification is based on
impermissible hindsight.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Non-Final Office Action and the Examiner's Answer, the decision of
6
Appeal 2018-001820
Application 13/549,192
the Examiner rejecting claims 21-3 9 under 3 5 U.S. C. § 10 3 (a) as
unpatentable over Dalton in view of Philips, Tsai, Hahn, and Lee is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
7