Ex Parte Godovich

Board of Patent Appeals and Interferences

Nov 15, 2010

11139851 (B.P.A.I. Nov. 15, 2010)

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.
11/139,851 05/27/2005 Mark Godovich G003-5418 4013
40627 7590 11/15/2010
ADAMS & WILKS
17 BATTERY PLACE
SUITE 1231
NEW YORK, NY 10004
EXAMINER
BERHANU, SAMUEL
ART UNIT PAPER NUMBER
2858
MAIL DATE DELIVERY MODE
11/15/2010 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 MARK GODOVICH
________________

Appeal 2009-004289
Application 11/139,851
Technology Center 2800
________________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004289
Application 11/139,851

2
STATEMENT OF THE CASE
Summary
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19 and 21-31.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as obvious over
Shoji (US 6,404,168 B1; issued June 11, 2002) in view of Jeong US
2005/0110456 A1; published May 26, 2005).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over
Shoji in view of Jeong and Trembley (US 6,937,947 B2; issued Aug. 30,
2005).
Claims 10-12 and 15-18 stand rejected under 35 U.S.C. § 103(a) as
obvious over Appellant’s Prior Art Disclosure in view of Shoji.
Claims 13, 14, 19, and 21-25 stand rejected under 35 U.S.C. § 103(a)
as obvious over Appellant’s Prior Art Disclosure in view of Shoji and Jeong.
Claims 26 and 28-31 stand rejected under 35 U.S.C. § 103(a) as
obvious over Appellant’s Prior Art Disclosure in view of Shoji and Huang
(US 2005/0231155 A1; issued Oct. 20, 2005).
Claim 27 stands rejected under 35 U.S.C. § 103(a) as obvious over
Appellant’s Prior Art Disclosure in view of Shoji, Huang, and Jeong.
We reverse the rejections of claims 1-18 and 22-31.
We affirm the rejection of claims 19 and 21.

2 We understand Appellant’s assertion that claims 1-31 are under appeal
(App. Br. 2) to be a misstatement. Claim 20 was canceled in the Response
filed May 11, 2006.
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Application 11/139,851

3
Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
claims 1-9 under 35 U.S.C. § 112 ¶ 1 because the originally-filed
Specification lacks adequate written description.
Appellant’s invention
Appellant’s invention is an improvement upon rechargeable battery
packs for portable electronic devices that have built in charging circuitry
(Spec. 1). In the prior art, the electronic device (such as a portable
computer) includes an external power plug that provides power for driving
the electronic device while charging the internal battery (Spec. 2).
“However, such conventional portable computers tend to experience
significant DC power connector malfunction” (Spec. 2-3). Appellant
addresses this problem by providing a rechargeable replacement battery pack
that additionally includes:
built-in charging circuitry and a power connector(s) by which
the portable computer 105 may be powered by an external DC
power source connected directly to the replacement battery
pack 100 or by the battery 112 of the replacement battery pack
100 which is charged by the DC power source. Thus, even
when the power connector 107 of the portable computer 105 is
inoperable, the portable computer 105 can be operated normally
without the necessity of repairing or replacing the power
connector 107.
(Spec. 18:22-19:4).
Appellant’s rechargeable battery pack includes the following three
sections: a power input section 126; a power storage section 128; and a
power input/output section 130 (Spec. 19-24; FIG. 2). The replacement
rechargeable battery pack includes the following functionalities:
First, when the input/output terminal 116 of the power input/output
section 130 is connected to a connector in the receiving bay of the electronic
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Application 11/139,851

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device (i.e., when the replacement battery pack is plugged into the portable
computer), and further when external power is supplied to the power input
section 126, the input/output terminal 116 functions as an output terminal,
delivering power received from the power input section to the portable
device (Spec. 20-21; FIG. 2).3 Excess power is supplied to the power
storage section to charge the battery 112 (Spec. 20).
Second, “when the portable computer 105 is not connected to the
power output section 130, the DC electric power from the power input
section 126 is used to charge the power storage section 128” (Spec. 21).
Third, “when the power supplied to the power input/output section
130 which is connected to the portable computer 105 is insufficient, the
battery 112 provides supplemental power to the input power switch circuit
142 of the power output section 130 through the protection circuit [of the
power storage section 128]” (Spec. 22-23).
[Fourth,] the input/output terminal 116 is also configured
for connection to a corresponding connector of a charging
station for charging the battery 112 of the replacement battery
pack 100 externally (i.e., when the replacement battery pack
100 is not housed in the receiving bay 120 of the portable
computer 105). In this case, the replacement battery pack 100
can be charged externally in a manner similar to the way a
conventional battery pack for a portable computer is charged.
Thus . . . the input/output terminal 116 . . . functions as both an
input terminal (i.e., for charging the battery 112) and an output

3 More specifically, Appellant’s Specification states that during a normal
mode in which the microcontroller 144 receives external power via the
power input section 126, the microcontroller 144 transmits the power to the
input power switch 142 of the power input/output section 130 (Spec. 23-24).
However, Figure 2 of the Specification alternatively depicts that the
microcontroller 144 transmits power to the input/output control circuit 154
of the power input/output section 130 instead of the input power switch 142.
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terminal (i.e., for supplying DC power to the portable computer
105).
(Spec. 24).
Claims 1-9
Appellant amended independent claim 1 to read as follows:
1. A replacement battery pack for an electronic device, the
replacement battery pack comprising:
a power storage section having a secondary battery;
a power input section having at least one power
connector for receiving electric power for charging the
secondary battery while powering an electronic device;
a power output/input section comprising a single
terminal functioning as an output terminal for receiving electric
power from the power input section and for supplying the
electric power to the electronic device when the single terminal
is connected to a connector of the electronic device, and
functioning as an input terminal for charging the secondary
battery by the electric power from the power input section when
the single terminal is connected to the connector of the
electronic device and for charging the secondary battery when
the single terminal is connected to an external power source
while the single terminal is disconnected from the connector of
the electronic device; and
an input power switch circuit for selectively inputting
electric power to the power output/input section either from the
power input section when the electric power is available
therefrom or from the power storage section when the electric
power is unavailable from the power input section.
(App. Br. 34-35 (Claims Appendix); Response 2 (filed May 11, 2006))
(emphases added).
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Appellant contends inter alia that the combined teachings of Shoji and
Jeong do not disclose or suggest the structural and functional combination of
claim 1, including the language emphasized above (App. Br. 12). We agree.
Neither of the cited prior-art references teaches or suggests a terminal
of a power output/input section that is capable of “functioning as an input
terminal for charging the secondary battery by the electric power from the
power input section when the single terminal is connected to the connector
of the electronic device,” as required by independent claim 1. Rather, Shoji
discloses an input section (not an input/output section) that performs a
battery charging function (see e.g., Shoji, FIG. 1).
Accordingly, we will not sustain the Examiner’s rejection of
independent claim 1 or of claims 2-8 which depend from claim 1. In further
regard to dependent claim 9, the Examiner’s additional reliance on Trembley
does not cure the deficiency of the obviousness rejection above. For the
same reasons, then, we will not sustain the Examiner’s rejection of
dependent claim 9.
We further note, though, that the language of claim 1 setting forth a
power output/input section comprising a terminal that “function[s] as an
input terminal for charging the secondary battery by the electric power from
the power input section when the single terminal is connected to the
connector of the electronic device” does not appear in the originally-filed
Specification. Rather, this language was first introduced by a later-filed
claim amendment (see Response filed May 11, 2006). Appellant’s
originally-filed Specification only discloses the terminal of the power
input/output section functioning as an input terminal when the replacement
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battery pack is disconnected from the electronic device and, instead, plugged
into a conventional charging station (see e.g., Spec. 24).
For the foregoing reasons, then, we enter a new ground of rejection
against independent claim 1, as well as dependent claims 2-9, under 35
U.S.C. § 112, ¶ 1 because the originally-filed Specification lack adequate
written description.
Claims 10-18 and 22-31
Independent claim 10 recites, inter alia, “a replacement battery pack
configured to be housed within or detached from the battery pack receiving
bay.” Dependent claim 23, which depends from independent claim 19, also
recites this limitation. Independent claim 26 includes a similar limitation, “a
replacement battery pack configured to be disposed in or removed from the
battery pack receiving bay.”
Appellant contends that none of the cited art discloses or suggests a
replacement battery pack that is configured such that it can be either
disposed within the battery pack receiving bay or alternatively removed
from the bay (e.g., App. Br. 9). The Examiner does not find that the cited art
teaches both configurations. Rather, the Examiner takes the position that
because these noted claims employ the word “or,” the cited prior art only
needs to disclose a replacement battery pack that possess one of the recited
configurations – not both.
We find the Examiner’s interpretation to be unreasonably broad.
Read in light of the Specification, it is more than reasonably clear that
Appellant used the claim term “or” to mean that the replacement battery
pack is configured to provide some functionality, both when the battery pack
is disposed in the bay as well as when it is detached from the bay.
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For the foregoing reasons, then, we will not sustain the Examiner’s
rejections of claims 10, 23, and 26, or the rejections of claims 11-18, 22-25,
and 27-31 which depend from these claims.
Claims 19 and 21
Independent claim 19 reads as follows:
19. A replacement battery pack comprising:
a power storage section having a secondary battery;
a power input section including an alternating current
power cord having an electrical plug at a first end for
connection to an external alternating current power source and
an electrical connector at a second end opposite the first end, an
alternating current/direct current converter circuit connected to
the electrical connector of the electrical plug for converting
external alternating current power from the external alternating
current power source to direct current power for charging the
battery, and a reel on which the alternating current power cord
is adapted to be wound and from which the alternating current
power cord is adapted to be dispensed; and
a power output/input section comprising a single terminal
functioning as an output terminal for receiving electric power
from the power input section and for supplying the electric
power to an electronic device when the single terminal is
connected to a connector of the electronic device, and
functioning as an input terminal for directly charging the
secondary battery when the single terminal is connected to an
external power source while the single terminal is disconnected
from the connector of the electronic device.
Appellant contends that the Examiner erred in rejecting claim
19 because the combined teachings of Shoji, Jeong, and the admitted
prior art do not disclose or suggest the last claim limitation (App. Br.
26-27). This argument is not persuasive.
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The Examiner has taken the position that Jeong’s input/output
control unit 20 corresponds to the claimed power output/input section,
and that Jeong’s multiple-use jack 10 corresponds to a single terminal
that functions as an output terminal and as an input terminal in the
manner claimed (Ans. 14). Appellant’s argument does not include
any reasoning for why the Examiner’s findings on these points are
incorrect.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of independent claim 19.
Accordingly, we will sustain the Examiner’s rejection of claim 19 and
dependent claims 21 which fall with claim 19.4

DECISION
We reverse the Examiner’s decision rejecting claims 1-18 and 22-31.
We affirm the Examiner’s decision rejecting claims 19 and 21.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection against claims 1-9 under 35 U.S.C. § 112 ¶ 1 because the
originally filed Specification lacks adequate written description.
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). See 37 C.F.R.
§ 1.136(a)(1)(v).

4 Appellant argues claims 19 and 21 together as a group. See App. Br. 26-
27. Accordingly, we select independent claim 19 as representative.
See 37 C.F.R. § 41.37(c)(1)(vii).

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FINALITY OF DECISION
Regarding the affirmed rejection of claims 19 and 21, 37 C.F.R.
§ 41.52(a)(1) provides that “Appellant may file a single request for rehearing
within two months of the date of the original decision of the Board.”
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This regulation states that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS 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. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
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Application 11/139,851

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final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

KIS

ADAMS & WILKS
17 BATTERY PLACE
SUITE 1231
NEW YORK, NY 10004