Ex Parte 6163816 et al

Patent Trial and Appeal Board

Aug 24, 2015

95001420 (P.T.A.B. Aug. 24, 2015)

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.
95/001,420 08/18/2010 6163816 RI1321366-816 7275
93143 7590 08/24/2015
Herskovitz & Associates, PLLC
2845 Duke Street
Alexandria, VA 22314
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/24/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

HTC CORPORATION
Requester

v.

FLASHPOINT TECHNOLOGY, INC.
Patent Owner
____________

Appeal 2014-004231
Reexamination Control 95/001,420
Patent 6,163,816
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

NEW DECISION
37 C.F.R. § 41.77(f)
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I. INTRODUCTION
A. Summary
In an earlier Decision issued in Appeal 2012-005564 and mailed
September 17, 2012 (“’564 Decision”), we reversed the Examiner’s decision
not to adopt certain grounds of rejection proposed by Third Party Requester,
HTC Corporation (“HTC”), to claims of U.S. Patent 6,163,816 (“the ’816
patent”). In particular, those grounds of rejection were the following:
(A) The anticipation of claims 1–17 under 35 U.S.C. § 102(b)
by TWAIN;
1

(B) The anticipation of claims 1–3, 5–11, and 13–17 under 35
U.S.C.§ 102(b) by Ueno;
2

(C) The unpatentability of claims 1–17 under 35 U.S.C.
§ 103(a) over Ueno and Steinberg;
3

(D) The unpatentability of claims 1–3, 5–11, and 13–17 under
35 U.S.C. § 103(a) over Ueno and IEEE 1394 DCS;
4
and

(E) The unpatentability of claims 1–3, 5–11, and 13–17 under
35 U.S.C. § 103(a) over Ueno and Thurlo.
5

1
A document providing instruction in connection with a “TWAIN toolkit”
and designated as “TWAIN - Release v1.6-February 5, 1996” in footers
contained within the document.
2
U.S. Patent 5,479,206, which issued Dec. 26, 1995.
3
U.S. Patent 6,006,039, which issued Dec. 21, 1999.
4
A document from the 1392 Trade Association titled “1394-based Digital
Camera Specification,” Version 1.04, August 9, 1996 providing instruction
as to use of the “IEEE 1394-1995” camera-to-PC interconnect.
5
U.S. Patent 5,835,772, which issued on Nov. 10, 1998.
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See ’564 Decision 15.
By operation of 37 C.F.R. § 41.77(b), the reversal of the above-noted
rejections constituted the entry of new grounds of rejection applied to the
claims. Patent Owner, Flashpoint Technology Inc. (“Flashpoint”), was
given the option of either reopening prosecution or requesting rehearing. Id.
at 16. Flashpoint elected to reopen prosecution. See “Response Reopening
Prosecution Under 37 CFR § 41.77(b)(1) and Proposed Amendment” filed
October 17, 2012 (“PO Resp.”). In that Response, Flashpoint sought
amendment of claims 1–17, and entry of new claims 18–85.
HTC filed responsive comments under 37 C.F.R. § 41.77(c) on
November 16, 2012 (“41.77(c) Comments”). As a part of those 41.77(c)
Comments, HTC proposed additional prior art grounds of rejection to
amended claims 1–17, and also proposed rejections of those claims under 35
U.S.C. § 112, first paragraph and second paragraph.
Ultimately, on March 15, 2013, an Administrative Patent Judge issued
an “Order Remanding Inter Partes Reexamination Under 37 C.F.R.
§ 41.77(d) to the Examiner.” In that Order, the Judge authorized the
amendment of claims 1–17, but denied entry of new claims 18–85. The
Judge also instructed the Examiner to consider the grounds of rejection to
claims 1–17 that were proposed by HTC as a part of its 41.77(c) Comments.
On May 20, 2013, the Examiner issued an “Examiner’s Determination
Under 37 [CFR] 41.77(d)” (“Examiner Determination” or “Ex’r Determ.”)
In that Examiner Determination, the Examiner determined that various prior
art rejections of claims 1–17 should be maintained, but that the proposed
rejections under 35 U.S.C. § 112 should not be maintained.
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On June 20, 2013, HTC filed “Comments Under 37 CFR 41.77(E) In
Response to Examiner’s Decision Under 37 CFR 41.77(D)” (“41.77(e)
Comments”). In those 41.77(e) Comments, HTC requests that the Board
adopt the rejections that were proposed under 35 U.S.C. § 112. See 41.77(e)
Comments 7. Flashpoint filed no comments under § 41.77(e).
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.
6

We affirm the Examiner’s determinations set forth in the Examiner’s
Determination pertaining to the grounds of rejections proposed for claims 1–
17 of the ’816 patent.
B. Illustrative Claim
Claim 1 is illustrative of the claimed subject of the ’816 patent, and is
reproduced below in its amended form:
1. (Amended) A system for retrieving capability parameters in a
hand held electronic device comprising:
a series of capability parameter storage locations coupled
to said electronic device for containing value sets corresponding
to said capability parameters, wherein said one or more of said
series of capability parameter storage locations each includes:
a minimum value location containing a minimum
capability parameter value;

6
37 C.F.R. § 41.77(f) reads:
(f) After submission of any comments and any reply pursuant to
paragraph (e) of this section, or after time has expired, the
proceeding will be returned to the Board which shall
reconsider the matter and issue a new decision. The new
decision is deemed to incorporate the earlier decision, except
for those portions specifically withdrawn.

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a maximum value location containing a maximum
capability parameter value;
a factory defaults location containing a factory
default value; and
a list-of-integers location containing a capability
parameter list;
a capability command for retrieving said value sets
from said capability parameter storage locations; [and]
a parameter manager device coupled to said
electronic device for executing said capability command for
retrieving said value sets corresponding to said capability
parameters wherein the value sets describe the functional
capability of the electronic device, and
wherein the value sets include a list of integers and a list
of corresponding string variables.
PO Resp. 18–19.
C. The Proposed Rejections Under 35 U.S.C. § 112
HTC contends that the added feature of “wherein the value sets
include a list of integers and a list of corresponding string variables” added
to each of claims 1, 9, 15, and 16 are not supported by the Specification of
the ’861 patent as required by 35 U.S.C. § 112. 41.77(c) Comments 4–5.
HTC also contends the following:
Moreover, Claim 1 fails to meet the requirements under
35 USC 112, First and/or Second Paragraphs because the claim
is an apparatus claim and recites "a capability command for
retrieving said value sets from said capability parameter storage
locations" as a limitation, which does not particularly point out
and distinctly claim the subject matter corresponding to an
apparatus.
Moreover, Claims 1, 9, 15 and 16 fail to meet the
requirements under 35 USC 112, First and/or Second
Paragraphs because the claims recite that each parameter
storage location includes a minimum value location, a
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maximum value location, a factory defaults location, and a list
of integers location.
41.77(c) Comments 5.
The Examiner determined that “amended claims 1–17 should not be
rejected under 35 U.S.C. 112 1
st
or 2
nd
paragraph as maintained by the
Requester.” Ex’r Determ. 7.
D. The Proposed Prior Art Rejections
As summarized by HTC in its 41.77(e) Comments, the Examiner
determined that the following twenty-one prior art rejections under 35 U.S.C
should be maintained:
1. Claims 1–17 are rejected under 35 U.S.C. § 102(b) as being
anticipated by TWAIN;
2. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over TWAIN;
3. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over TWAIN in view of Kernighan;
7

4. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over TWAIN in view of Howes;
8

5. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over TWAIN in view of Ishida;
9

6. Claims 1–3,5–11 and 13–17 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ueno;
7. Claims 1–17 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Ueno and Steinberg;

7
Brian W. Kernighan and Dennis M. Ritchie, The C Programming
Language. AT&T Bell Laboratories, Murray Hill, New Jersey (2
nd
Ed.
1998).
8
U.S. Patent 4,403,303, which issued Sep. 6, 1983.
9
EP 0 647 900 A1, which published April 12, 1995.
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8. Claims 1–3, 5–11 and 13–17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ueno and IEEE 1394
DCS;
9. Claims 1–3, 5–11 and 13–17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ueno and Thurlo;
10. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno and Kernighan;
11. Claims 1–17 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Ueno, Steinberg, and Kernighan;
12. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno, IEEE 1394 DCS and Kernighan;
13. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno, Thurlo and Kernighan;
14. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno and Howes;
15. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno, Steinberg and Howes;
16. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno, Steinberg and Howes;
17. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno, Thurlo and Howes; and
18. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno, Steinberg and Ishida;
19. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno, Steinberg and Ishida;
20. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno, IEEE 1394 DCS and Ishida; and
21. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno, Thurlo and Ishida.
See 41.77(e) Comments 2–3.
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II. ANALYSIS
A. The Proposed Rejections Under 35 U.S.C. § 112
The Examiner laid out in detail where he believes that the added
feature “wherein the value sets include a list of integers and a list of
corresponding string variables” finds support in the Specification of the ’816
patent, and satisfies the requirements of 35 U.S.C. § 112. In that respect
pointing, in particular, to column 8, lines 1–8, and Figure 8 A. Ex’r Determ.
4–7. In particular, the Examiner explains the following:
As set forth in the '816 patent, col. 8, lines 1–8:

In the specific case of a capability parameter in
"list of values" format, the value set for the
capability parameter contains a variable (of type
unsigned integer) called count 810 and a value list
812 which includes a list of integers and
corresponding string variables. In the FIG. 8A
example, "0" is associated with "Off", "1" is
associated with "Auto", "2 is associated with
"Fill", "3" is associated with "Slave", and "4" is
associated with "Sync".

As described in the patent specification a "value set"
includes a variable called a count and a value list which
includes a list of integers and corresponding string variables.
The specification states e.g., that "1" is associated with "Auto"
and "2" is associated with "Fill". Thus, the examiner considers
that the newly added limitation associates a list of integers with
corresponding string variables.
Id. at 4. Thus, the Examiner concludes that the disclosure in the ’816 patent
of “a list of integers and corresponding string variables,” i.e., 0–4 and the
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listing of associated variables: “Off,” “Auto,” “Fill,” “Slave,” and “Sync,”
provide adequate support for the above-noted feature added to the claims.
We agree. Although HTC generally discounts the content of the
Specification, including that reproduced above, as accounting for “‘a list of
integers and a list of corresponding string variables’” (41.77(e) Comments
4–6), HTC does not explain adequately the basis of its position. In that
regard, we have considered HTC’s arguments, but are not persuaded that
“claims 1–17 should be rejected for failing to meet the requirements under
35 U.S.C. § 112, First and/or Second Paragraphs.” Id. at 6.
Accordingly, we affirm the Examiner’s decision not to reject claims
1–17 under 35 U.S.C. § 112.
B. The Proposed Prior Art Rejections
As noted above, HTC proposed twenty-one grounds of rejection to
amended claims 1–17, including five based primarily on TWAIN, and
sixteen based primarily on Ueno. The Examiner recommends that those
grounds be maintained. Ex’r Determ. 7–32. In making that
recommendation, the Examiner explains in detail where all the features of
claims 1–17 are found in the prior art and, for those grounds premised on
obviousness, why a person of ordinary skill in the art would have had reason
to combine the teachings of the prior art. In reviewing the Examiner’s
Determination, and the underlying prior art on which it relies, we do not
discern error on the part of the Examiner.
Flashpoint also did not file any comments pursuant to 37 C.F.R.
§ 41.77(e), although it could have. In that regard, Flashpoint did not avail
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itself of its opportunity to explain to the panel why or how there is error in
the Examiner’s Determination.
10

On the record before us, we are not persuaded that there is reason to
disrupt the Examiner’s recommendations to maintain the twenty-one
rejections based on the prior art. Accordingly, we affirm the Examiner’s
determination that the prior art grounds should be maintained.
III. CONCLUSION
For the foregoing reasons, we conclude the following:
The Examiner’s determination that amended claims 1–17 should not
be rejected under 35 U.S.C. § 112 is affirmed; and
The Examiner’s determination that the twenty-one prior art rejections
noted in this Decision should be maintained is affirmed.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this Decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must

10
We are cognizant of the paper filed on May 11, 2015 titled “Patent
Owner’s Request for Reversal of Examiner’s Rejections” (“Request”). That
paper was not filed within the time period for response or comments
provided for by 37 C.F.R. 41.77, and is not properly before the panel in
resolving this appeal. In any event, the Request simply sets forth that
Flashpoint and HTC have entered into a “Settlement Agreement,” and that
HTC will no longer participate in the appeal. Request 1–2. Flashpoint
requests, on that basis alone, the “reversal of the Examiner’s rejections.” Id.
The Board, however, is not bound by any settlement agreement between the
parties. The Appeal is ready for a new decision by the Board pursuant to 37
C.F.R. § 41.77(f). To the extent that the Request is a paper directed to the
Board in some other capacity requesting relief, the Request is denied.
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timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

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ack
PATENT OWNER:

HERSKOVITZ & ASSOCIATES, LLC
2845 DUKE STREET
ALEXANDRIA, VA 22314

THIRD-PARTY REQUESTER:

PEKINS COIE LLP
P.O. BOX 1247
SEATTLE, WA 98111-1247