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Court Affirms Rejection of Claims, Even Though Board Applied New Combination of Prior Art

January 15, 2004

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Last Month at the Federal Circuit - February 2004

Judges: Dyk (author), Michel, and Rader

In In re Watts, Jr., No. 03-1121 (Fed. Cir. Jan. 15, 2004), the Federal Circuit affirmed a decision by the Board that upheld a rejection of many claims of U.S. Patent Application No. 08/568,904 (“the ‘904 application”) as being obvious. Although the Court found error in the Board’s sustaining the rejection of claims 21 and 23, it found the error to be harmless and affirmed the Board’s decision on a new ground of rejection.

The ‘904 application is directed to real-time thermal management for computers. The claimed system selectively stops clock signals from being sent to a central processing unit (“CPU”) in a computer when the computer reaches a certain temperature, thereby slowing down portions of the CPU and reducing heat production.

The Examiner rejected many of the claims as being obvious over U.S. Patent No. 5,590,061 (“Hollowell”) in view of U.S. Patent Nos. 5,502,838 (“Kikinis”) and 5,493,684 (“Gephardt”). The Examiner determined that the only claim element missing from Hollowell and Kikinis was stopping clock signals “to the CPU only when the CPU is not processing critical I/O.” To cure the deficiency of Hollowell and Kikinis, the Examiner applied Gephardt.

The Examiner rejected other claims as being obvious over Hollowell in view of Kikinis and U.S. Patent No. 5,422,806 (“Chen”), but the Examiner did not specify whether the combination of Hollowell, Kikinis, and Chen disclosed the critical I/O function and did not rely on Gephardt as teaching this functionality.

Appellant, LaVaughn F. Watts, Jr., appealed the rejection to the Board, arguing that Gephardt does not teach the critical I/O element because it did not disclose detecting critical I/O activities. According to Watts, the activities mentioned in Gephardt were inconsistent with the claimed critical I/O activities. Watts also argued that Gephardt failed to teach slowing clock speed based on CPU activity and temperature. Watts also disputed the rejection of claims based on Hollowell, Kikinis, and Chen, submitting that the combination failed to teach or suggest the critical I/O element. The Board affirmed.

Watts argued, on appeal, that Gephardt does not teach or suggest stopping clock signals during noncritical information processing but not during critical I/O processing. The Federal Circuit declined to consider the Appellant’s argument regarding Gephardt, however, because the argument was raised for the first time on appeal.

Claims 21 and 23 were grouped with several other claims that were rejected as obvious over Hollowell, Kikinis, and Chen. The Board did so, contending that Watts had not articulated why these claims were separately patentable. The Federal Circuit concluded that the Board had erred in grouping the claims together because Watts had sufficiently argued them to be separately patentable. However, the Court found the error to be harmless, because it did not affect the Board’s decision. Specifically, the Federal Circuit ruled that claims 21 and 23 could be grouped with the other claims that had been rejected based on Gephardt because Watts had made the exact same arguments regarding Gephardt for claims 21 and 23 as he had for the other claims that were properly rejected based on Gephardt. The Court found that Watts even appeared to assume that the Board actually intended to rely on Gephardt in rejecting claims 21 and 23.

Accordingly, the Court found that Watts failed to show that the Board’s failure to rely on Gephardt with respect to claims 21 and 23 was harmful error and, therefore, affirmed the Board’s decision without remand.