Ex Parte Homer et al

Patent Trial and Appeal Board

Nov 25, 2014

11491431 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN S. HOMER, PAUL J. DOCZY, and
TIMOTHY NEILL
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Appeal 2012-008932
Application 11/491,431
Technology Center 2600
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Examiner finally rejected claims 1–22. Appellants appeal from
the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention relates to "wireless communications interface for a
portable electronic device." Claim 1, reproduced below, is representative of
the claimed subject matter:
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1. A wireless communications system, comprising:

[a] a portable electronic device having an internal antenna
for wireless communications disposed therein; and

a wireless communications interface,

[b] wherein the interface switches from using the internal
antenna for the wireless communications to using an external
antenna for the wireless communications when the portable
electronic device is coupled with a docking station having the
external antenna engaged therewith, and

[c] wherein the interface detects disengagement of the
external antenna from the docking station and switches from
using the external antenna for the wireless communications to
using the internal antenna for the wireless communications
when the portable electronic device is coupled with the docking
station and the external antenna is disengaged from the docking
station.
(Elements lettered).
REJECTIONS
R1. Claims 1–8, 10–20, and 22 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Delamater (US 5,828,341, iss. Oct. 27,
1998) in view of Stefano (US 4,169,575, iss. Oct. 2, 1979), and Caesar (US
2007/0085748 A1, pub. Apr. 19, 2007).

R2. Claims 9 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Delamater, Stefano, Caesar and Chuang et al. (US
2005/0128690 A1, pub. June 16, 2005); hereinafter referred to as
“Chuang”).
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GROUPING OF CLAIMS
Based on Appellants' arguments, we decide the appeal of:
Rejection of claims: on the basis of representative claim:
R1. claims 1–8 and 10–22 1
R2. claims 9 and 21 Individually
See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1

ANALYSIS
We consider all of Appellants' arguments and evidence presented. We
disagree with Appellants' contentions regarding the Examiner's rejections of
the claims. We adopt as our own: (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and (2) the
reasons set forth by the Examiner in the Answer in response to arguments
made in Appellants' Appeal Brief. (Ans. 20–22). We highlight and address
specific findings and arguments below:
A.
As an initial matter of claim construction, a question arises as to how
much patentable weight, if any, should be given the contested functional
limitations recited in the “wherein” clauses.2 Thus, a question arises as to

1 Appellants filed a Notice of Appeal on Nov. 22, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th
ed., Rev. 8, July 2010.
2 See MPEP § 2111.04 regarding “wherein” clauses:
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whether the functional limitations, [b] (“switches”), and [c] (“detects”), limit
the scope of the apparatus claim. Our reviewing court guides the
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int'l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “It is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) (citations omitted). See also Superior Indus., Inc. v.
Masaba, Inc., 553 Fed. Appx. 986, 991 (Fed. Cir. 2014) (Rader, J.,
concurring) (stating: “[A] system claim generally covers what the system is,
not what the system does.” 3 Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150,
157 (U.S. 1875) ((“The inventor of a machine is entitled to the benefit of all
the uses to which it can be put, no matter whether he had conceived the idea
of the use or not.”). Thus, it is usually improper to construe non-functional
claim terms in system claims in a way that makes infringement or validity

Claim scope is not limited by claim language that suggests or makes
optional but does not require steps to be performed, or by claim language
that does not limit a claim to a particular structure. However, examples of
claim language, although not exhaustive, that may raise a question as to the
limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012).
3 Superior Indus., Inc. v. Masaba, Inc., 553 Fed. Appx. 986 (Fed. Cir.
2014) is a non-precedential opinion of the Court of Appeals for the Federal
Circuit. However, we consider the concurring opinion by former Chief
Judge Rader as guiding because it cites precedential authority in support.
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turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d
1075, 1091 (Fed. Cir. 2009).
Assuming arguendo our reviewing court may give full patentable
weight to the contested functional limitations recited within “wherein”
clauses [b] and [c], we find the preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness for the reasons discussed below.
B.
Appellants contend the combination of the Delamater, Stefano, and
Caesar references does not disclose claim 1 limitations [b] and [c]. (Reply
Br. 4; App. Br. 11–17). Appellants contend:
[T]he Delamater reference provides that "[a]ntenna 72 is
required when using computer 20 to transmit/receive
information from within the vehicle due to the steel shell of the
vehicle causing shielding of radio frequency (RF) signals"
(emphasis added) (Delamater, col. 6, lines 18-21). Thus, the
Delamater reference specifically provides that antenna 72 "is
required" when notebook computer 20 is mated with docking
cradle 64.
Accordingly, by providing that antenna 72 "is required"
when notebook computer 20 is mated with docking cradle 64,
the Delamater reference actually teaches away from
disengagement of antenna 72 from docking cradle 64, and
actually teaches away from use of notebook computer 20
without antenna 72 while notebook computer 20 is mated with
docking cradle 64.
(Reply Br. 2–3).
Appellants' contentions are unpersuasive because Delamater does not
“teach away” from disengagement of antenna 72 from docking cradle 64.
(Delamater, col. 6, ll. 18–21; col. 7, ll. 22–25). Delamater describes when
the computer is in the vehicle, the external antenna is required to
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receive/transmit information. (Delamater, col. 6, ll. 18–21). Contrary to
Appellants’ contention, Delamater does not teach the external antenna is
required when the notebook computer 20 is mated with docking cradle 64.
(Delamater, col. 6, ll. 18–21). Therefore, Delamater does not criticize,
discredit, or otherwise discourage (teach away) from limitation [c]
(switching from the external antenna to the internal antenna “when the
portable electronic device is coupled with the docking station and the
external antenna is disengaged from the docking station” – claim 1).4
For these reasons, on this record, we are not persuaded the Examiner
erred.
C.
Regarding the Stefano reference, Appellants contend, “dismounting
the antenna from the trunk lid of the automobile, however, does not
constitute disengagement of the antenna and, more specifically, does not
constitute disengagement of an antenna from a docking station for a portable
electronic device, as recited by Appellant.” (Reply Br. 3).
Appellants' contention is unpersuasive. Appellants' contention does
not consider and address the full teachings and suggestions of the Stefano
reference, as cited by the Examiner. (Ans. 21; Stefano, col. 3, ll. 44–54).
Specifically, Stefano teaches removing the antenna and “any external
appearance of the presence of a transmitter receiver inside of the vehicle”

4 “[A] disclosure . . . does not constitute a teaching away . . . [if] such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants
have not identified any passage in Ratcliff that persuasively “criticize[s],
discredit[s], or otherwise discourage [s] the solution claimed” (id.).

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(e.g., removing the cable extending outside of the window to the antenna
mount on the trunk (See col 3, ll. 44–47)). We find this would have taught
or suggested disconnecting the external antenna from the transmitting/
receiving electronic device (Ans. 21), because an artisan would have
disconnected the cable from the antenna to store the antenna in the trunk and
put the cable inside the car window.5 (See Stefano, col. 3, ll. 44–47.).
Moreover, the Examiner combines Delamater’s portable computing device,
docking cradle, antenna switch, and external antenna, with Stefano's
disengaging external antenna for teaching or suggesting limitation [c]:
“disengagement of the external antenna from the docking station.”
(Ans. 5–6). Caesar is cumulative with Stefano, as Caesar also teaches
disengaging an external cable from an electronic device. (See Caesar ¶ 4.)
For these reasons, on this record, we are not persuaded the Examiner
erred.
D.
Regarding the Caesar reference, Appellants contend:
[The] Caesar reference, however, do[es] not detect
disengagement of an external antenna from a docking station,
and do not switch from using an external antenna for wireless
communications to using an internal antenna for wireless
communications when a portable electronic device (having the
internal antenna disposed therein) is coupled with the docking
station and the external antenna is disengaged from the docking
station, as recited by Appellant. Rather, the Caesar reference
simply detects connection of an external antenna, and switches

5 “[A]nalysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int'l Co. v. Teleflex Inc. 550 U.S. 398, 418 (2007).
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between an internal antenna and the external antenna when the
external antenna itself is connected.
(Reply Br. 4).
Appellants' contentions are unpersuasive because Appellants attack
the Caesar reference in isolation and do not address the Examiner's specific
findings regarding the combined teachings and suggestions of the
references.6 (Ans. 5–7).
E.
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain rejection R1 of representative claim 1, and
the grouped claims rejected under rejection R1 which fall therewith. (See
Grouping of Claims, supra).
R2.
Regarding the remaining rejection R2 of claims 9 and 21, Appellants
urge these claims are patentable by virtue of their dependency from
independent claims 1 and 20. (App. Br. 17). However, we find no

6 Appellants' arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in
the art and are therefore ineffective to rebut the Examiner's prima facie case
of obviousness. As the Court stated in In re Keller, 642 F.2d 413, 425
(CCPA 1981):
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any
one or all of the references. Rather, the test is what
the combined teachings of the references would have
suggested to those of ordinary skill in the art (emphasis
added) (citations omitted).
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deficiencies in the rejection of claims 1 and 20 for the reasons discussed
above regarding rejection R1. Therefore, we sustain the Examiner's
rejection R2 of claims 9 and 21.

DECISION
We affirm the Examiner's rejections of claims 1–22 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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