Ex Parte Ford et al

Board of Patent Appeals and Interferences

May 11, 2012

10736854 (B.P.A.I. May. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/736,854 12/16/2003 Jeremy M. Ford 16356.826 (DC-05328) 9080
27683 7590 05/14/2012
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
CLEARY, THOMAS J
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
05/14/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEREMY M. FORD and JAMES D. WINDEN
____________
Appeal 2010-000821
Application 10/736,854
Technology Center 2100
____________

Before ROBERT E. NAPPI, MICHAEL R. ZECHER, and
BRUCE R. WINSOR, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000821
Application 10/736,854

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner‟s
Final Rejection of claims 1, 5-11, and 21. Claims 2-4 and 12-20 have been
cancelled. Br. 2;
1
Ans. 2-3.
2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a system, method, and apparatus directed to audio
solutions for information handling systems with docking stations. See Spec.
¶ [0001].
Illustrative Claim
1. An information handling system including:
a processor;
memory coupled to the processor;
glue logic coupled to the processor for facilitating
connection of the processor to other devices;
an audio coder and decoder coupled to the glue
logic and including a unidirectional Sony-Philips Digital
Interface (S/PDIF) digital audio output;
a first multi-pin docking connector in a portable
portion, wherein only one audio pin of the first multi-pin
docking connector is coupled to the audio coder and
decoder, and wherein the only one audio pin of the first
multi-pin docking connector is coupled to the audio
coder and decoder via the unidirectional S/PDIF digital
audio output;
a second multi-pin docking connector in a docking
station, wherein only one audio pin of the second multi-
pin docking connector is coupled to the only one audio
pin of the first multi-pin docking connector; and

1
All references to the Brief are to the Brief filed on March 10, 2009, which
replaced the Brief filed on January 12, 2009.
2
All references to the Answer are to the Answer mailed on July 21, 2009,
which replaced the Answer mailed June 3, 2009.
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Application 10/736,854

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a digital audio receiver to convert S/PDIF digital
audio to analog audio and including a unidirectional
S/PDIF digital audio input, wherein the digital audio
receiver is located at the docking station and coupled to
the only one audio pin of the second multi-pin docking
connector via the unidirectional S/PDIF digital audio
input.

Prior Art Relied Upon
Cho US 6,148,353 Nov. 14, 2000
Markow US 6,359,994 B1 Mar. 19, 2002
Schinner US 2004/0212822 A1 Oct. 28, 2004
(filed Apr. 22, 2003)

John L. Hennessy and David A. Patterson, Computer Organization
and Design: The Hardware/Software Interface, 2nd ed. (1998), at 13-17
(“Hennessy”).

DJ Greaves, About SP-DIF or S/PDIF, 1-2 (1996) available at
http://www.bigbrownbus.com/mixerton/whitepapers/spdif/sp-dif.html (last
visited May 8, 2012) (“Greaves”).

Rejections on Appeal
Claims 1, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cho, Schinner, Greaves, and
Hennessy. Ans. 4-6.
Claims 7-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cho, Schinner, Greaves, Hennessy,
and Markow. Ans. 6-7.
Claims 11 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cho, Schinner, and Greaves. Ans. 7-
11.
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Application 10/736,854

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Examiner’s Findings and Conclusions
The Examiner finds that Greaves describes the physical link for
S/PDIF as “the line” in the singular form. Ans. 5 and 12. As such, the
Examiner broadly, but reasonably construes “the line” in Greaves as a single
line. Ans. 12. Therefore, the Examiner finds that Greaves‟ S/PDIF link
teaches or suggests “only one audio pin of the first multi-pin docking
connector . . . [,]” as recited in independent claim 1. Ans. 5 and 12.
Moreover, the Examiner finds that is well known in the art to send S/PDIF
digital audio over a single conductor, and not over a connection requiring
both a “+” conductor and a “-” conductor. Id. Further, the Examiner finds
that independent claim 1 requires that “only one audio pin of the first multi-
pin docking connector” is coupled to the “audio coder and decoder” and
“only one audio pin of the second multi-pin docking connector” is coupled
the “digital audio receiver.” Ans. 14. The Examiner finds that the claim
does not preclude other non-audio pins, such as a ground conductor, from
being coupled to the claimed “digital audio receiver” and “audio coder and
decoder.” Id.
Appellants’ Contentions
Appellants disagree with the Examiner‟s position that the use of
Greaves‟ S/PDIF as a unidirectional digital audio link would necessarily
only allow a single audio pin of the docking connector to be coupled to the
audio coder and decoder through the S/PDIF link, and a single audio pin of
the docking connector to be connected to the digital audio receiver through
the S/PDIF link. Br. 7. In particular, Appellants contend that an ordinarily
skilled artisan would have understood that Greaves‟ S/PDIF link or single
audio channel requires two conductors commonly referred to as a “+”
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Application 10/736,854

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conductor and a “-” conductor and, therefore, fails to teach or suggest “only
one audio pin of the first multi-pin docking connector . . . [,]” as recited in
independent claim 1. Br. 8.

II. ISSUE
Did the Examiner err in finding that the combination of Cho,
Schinner, Greaves, and Hennessy teaches or suggests “only one audio pin of
the first multi-pin docking connector . . . [,]” as recited in independent claim
1.

III. ANALYSIS
35 U.S.C. § 103(a) Rejection—Combination of Cho, Schinner, Greaves, and
Hennessy

Claim 1
We do not find error in the Examiner‟s obviousness rejection of
independent claim 1, which recites, inter alia, “only one audio pin of the
first multi-pin docking connector . . . .”
We begin our analysis by noting that the Examiner relies upon the
theory of inherency in finding that Greaves‟ S/PDIF link (1: ¶ [2]) consists
of a single audio conductor surrounded by a grounded shield conductor and,
therefore, only contains one audio pin. See Ans. 5, 12, and 14. Inherency is
a question of fact that arises both in the context of anticipation and
obviousness rejections. In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)
(affirmed a 35 U.S.C. § 103(a) rejection based in part on the inherent
disclosure in one of the applied prior art references). See also In re
Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983). “In relying upon the theory
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of inherency, the [E]xaminer must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (emphasis in original).
“[A]fter the PTO establishes a prima facie case of [obviousness] based on
inherency, the burden shifts to [A]ppellant to „prove that the subject matter
shown to be in the prior art does not possess the characteristic relied on.”‟
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (quoting In re Swinehart,
439 F.2d 210, 212-13 (CCPA 1971)). See also Manual of Patent Examining
Procedure §§ 2112 (IV-V) (Rev. 8, July 2010).
This reasoning is applicable here. We find that the Examiner has
provided a technical reasoning in the Answer that reasonably supports the
finding of inherency in the context of an obviousness rejection. Appellants
did not file a Reply Brief that specifically addresses the Examiner‟s finding
that only one audio pin necessarily flows from Greaves‟ S/PDIF link. See
Ans. 5 and 12. Consequently, we find that Appellants have not met the
burden of proving that the subject matter shown to be in Greaves does not
possess the characteristic relied on by the Examiner—in this case that
Greaves‟ S/PDIF link contains only a single audio channel.
Assuming arguendo that Greaves‟ S/PDIF link contains a single audio
channel that requires two conductors (i.e., an audio conductor and ground
shield conductor), as alleged by Appellants (Br. 8), we nonetheless agree
with the Examiner that the scope of independent claim 1 does not preclude
other non-audio pins, such as a ground shield conductor, from being coupled
to the claimed “digital audio receiver” and “audio coder and decoder.” See
Ans. 14. As such, we find that the inherent characteristics of Greaves‟
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S/PDIF link teach or fairly suggest the disputed claim limitation. It follows
that the Examiner has not erred in concluding that the combination of Cho,
Schinner, Greaves, and Hennessy renders independent claim 1 unpatentable.
Claims 5 and 6
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 5-6. See Br. 7-10. Therefore,
since Appellants group dependent claims 5 and 6 with independent claim 1
(id), these claims fall with independent claim 1. See 37 C.F.R.
§ 41.37(c)(l)(vii).
35 U.S.C. § 103(a) Rejection—Combination of Cho, Schinner, Greaves,
Hennessy, and Markow

Claims 7-10
Appellants contend that Markow does not remedy the above-noted
deficiencies of Cho, Schinner, Greaves, and Hennessy. Br. 10. As
discussed supra, we find no such deficiencies in Cho, Schinner, Greaves,
and Hennessy for Markow to remedy. It follows that the Examiner has not
erred in concluding that the combination Cho, Schinner, Greaves, Hennessy,
and, Markow renders dependent claims 7-10 unpatentable.
35 U.S.C. § 103(a) Rejection—Combination of Cho, Schinner, and Greaves

Claims 11 and 21
Appellants offer the same argument set forth in response to the
obviousness rejection of independent claim 1 to rebut the obviousness
rejection of independent claims 11 and 21. See Br. 11. We have already
addressed this argument in our discussion of independent claim 1, and we
found it unpersuasive. It follows that the Examiner has not erred in
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Application 10/736,854

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concluding that the combination of Cho, Schinner, and Greaves renders
independent claims 11 and 21 unpatentable.

IV. CONCLUSION
The Examiner has not erred in rejecting claims 1, 5-11, and 21 as
being unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We affirm the Examiner‟s decision to reject claims 1, 5-11, and 21.
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

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