Ex Parte Shih et al

Patent Trial and Appeal Board

Sep 16, 2013

11247348 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHIEN YI SHIH and JUNG TSAN HSU
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Appeal 2011-002701
Application 11/247,348
Technology Center 2600
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002701
Application 11/247,348

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a second rejection of
claims 13-15. Claims 1-12 have been withdrawn. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary independent claim 13 under appeal, with emphasis added,
reads as follows:
13. A portable computer capable of dynamically
adjusting a USB supporting rate and data rate for power saving,
communicating with an AP (Access Point) through a wireless
device connected thereto via an interface with a first supporting
rates, the AP communicating with the wireless device with a
first data rate, the portable computer working under a first clock
frequency and a first reference voltage, comprising:
a one-button switch connected to a GPIO of the portable
computer for activating a power-saving event when pushed;
a power unit including a battery and power supply to
convert external AC source;
a power source detecting device for recognizing the
portable computer is powered by the battery or the power
supply;
a USB interface; and
a managing controller including an USB interface mode
controller and a data rate controller; wherein the USB interface
mode controller decreases the first supporting rate of the USB
interface in response to the power-saving event, and the data
rate controller decreases the first data rate transmitting between
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the AP and the wireless device in response to the power-saving
event.
Examiner’s Rejection
The Examiner rejected claims 13-15 as being unpatentable under
35 U.S.C. § 103(a) over Park (US 2005/0047382 A1), Chen (US
2004/0078606 A1), Siwinski (US 2002/0186214 A1), and Masahiro (JP
2004-310174).1 Ans. 3-6.
Principal Issue on Appeal
Based on Appellants’ arguments (Br. 4-9), the following principal
issue is presented:
Did the Examiner err in rejecting claims 13-15 as being obvious
because the combination of Park, Chen, Siwinski, and Masahiro is not
properly combinable to teach or suggest the portable computer limitations at
issue in representative and sole independent claim 13, including “a one-
button switch?”
Appellants’ Contentions
Appellants contend (Br. 4-8) that the Examiner erred in rejecting
claims 13-15 under 35 U.S.C. § 103(a) over Park, Chen, Siwinski, and
Masahiro for numerous reasons including:

1 Separate patentability is not argued for dependent claims 14 and 15, and
Appellants argue these claims for the same reasons as given for claim 13
from which claims 14 and 15 each depend (see Br. 8). We select sole
independent claim 13 as representative of the group of claims rejected under
§ 103(a) (claims 13-15), pursuant to our authority under 37 C.F.R.
§ 41.37(c)(1). Accordingly, our analysis herein will only address
representative claim 13.

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(1) Siwinski fails to disclose, teach, or suggest the “one-button
switch” as set forth in claim 13 (Br. 4-6); and
(2) the Examiner employs impermissible hindsight, and there is no
motivation for combining the applied references (Br. 6-8).

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions in the Appeal Brief (Br. 4-9) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Ans. 3-6), and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief
(see Ans. 6-8). We concur with the conclusions reached by the Examiner.
The key limitation of claim 13 at issue is “a one-button switch
connected to a GPIO of the portable computer for activating a power-saving
event when pushed.” Appellants argue (Br. 4-6) that Siwinski fails to
disclose, teach, or suggest the one-button switch. The Examiner relies on
Siwinski as teaching a one-button switch as recited in claim 13. In the
Response to Argument portion of the Answer, the Examiner cites paragraph
[0019] of Siwinski as teaching the one-button switch.
Siwinski’s last sentence of paragraph [0019] states that “A touch
screen display may also be used to implement the battery saving mode
switch.” Thus, we agree with the Examiner (Ans. 7) that Siwinski teaches or
suggests the one-button switch recited in claim 13, because touch screen 30
implies using a single touch of a finger to activate the power saving feature
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(see display 30 in Fig. 3 of Siwinski), and paragraph [0019] discloses that
touch screen 30 can be used as the battery saving mode switch.
No Reply Brief has been filed, and Appellants have not otherwise
rebutted the Examiner’s reliance on paragraph [0019] of Siwinski.2 In view
of the foregoing, Appellants’ argument (Br. 4-6) that Siwinski fails to
disclose, teach, or suggest the one-button switch recited in claim 13 is not
persuasive.
Appellants also argue (Br. 6-8) that there is no motivation to combine
and impermissible hindsight. However, the Examiner has provided a factual
basis and articulated reasoning with a rational underpinning to support the
conclusion of obviousness with regard to claim 13 (see Ans. 3-8). See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we
disagree with Appellants’ assertions (Br. 6-8) that there is no motivation to
combine the applied references, and that impermissible hindsight was used.
In view of the foregoing, Appellants have not sufficiently shown that
the Examiner erred in rejecting independent claim 13, and/or its respective
dependent claims 14 and 15, under 35 U.S.C. § 103(a) and we sustain the
rejection before us.

2 Although Appellants dispute the use of Siwinski’s paragraph [0019] as
teaching the recited “one-button switch” (Br. 4-5), Appellants emphasize the
second to last sentence of the paragraph, and do not address the most
relevant portion of the paragraph, the last sentence upon which the Examiner
relies (see Ans. 5 and 7).
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CONCLUSION
The Examiner has not erred in determining that the combination of
Park, Chen, Siwinski, and Masahiro teaches or suggests the invention set
forth in claims 13-15.

DECISION
The Examiner’s rejection of claims 13-15 under 35 U.S.C. § 103(a) is
affirmed.
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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