Ex Parte Achanta et al

Board of Patent Appeals and Interferences

Nov 29, 2011

11126115 (B.P.A.I. Nov. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHANI GOPAL V. ACHANTA, RIAZ Y. HUSSAIN, and
SCOTT THOMAS JONES
____________________

Appeal 2009-008712
Application 11/126,1151
Technology Center 2100
____________________

Before JEAN R. HOMERE, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed May 10, 2005. The real party in interest is International
Business Machines Corp. (Br. 1.)
Appeal 2009-008712
Application 11/126,115

2
STATEMENT OF THE CASE
Appellants appeal under authority of 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 12 and 14-27. Claims 1-11 and 13 have been
canceled. The Board of Patent Appeals and Interferences (BPAI) has
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ Invention
The invention at issue on appeal concerns a keydrive and computer
program product for displaying memory statistics for a keydrive. The
keydrive stores memory statistics in a memory of the keydrive and displays
the statistics on a display on the keydrive. (Spec. 1:12-13; 3:3-15.)2
Representative Claims
Independent claims 12 and 22, reproduced below with the key
disputed limitations emphasized, further illustrate the invention:
12. A keydrive, the keydrive comprising:
logic circuitry;
a power source;
a display; and
a computer memory coupled for data transfer to the logic
circuitry, the computer memory having disposed within it a
memory statistics module, the memory statistics module
comprising computer program instructions capable of:
storing memory statistics received from another device in
memory on the keydrive, and

2 We refer to Appellants’ Specification (“Spec.”) and Amended Appeal
Brief (“Br.”) filed July 21, 2008. We also refer to the Examiner’s Answer
(“Ans.”) mailed October 29, 2008.
Appeal 2009-008712
Application 11/126,115

3
displaying the memory statistics on a display on the
keydrive;
wherein the another device further comprises a processor
and computer memory operatively coupled to the processor, the
device’s computer memory having stored within it computer
program instructions capable of:
receiving a command resulting in a change to the
memory usage of the keydrive,
calculating the memory statistics describing the current
state of memory usage of the keydrive, and
storing the memory statistics in memory on the keydrive.

22 A computer program product for displaying
memory statistics for a keydrive, the computer program product
comprising computer program instructions disposed upon a
computer readable recording medium, the computer program
instructions when executed performing:
receiving, by a device, a command resulting in a change
to the memory usage of the keydrive;
calculating, by the device, memory statistics describing
the current state of memory usage of the keydrive;
storing, by the device, the memory statistics in memory
on the keydrive; and
displaying, by the keydrive, the memory statistics on a
display on the keydrive.

References
The Examiner relies on the following references as evidence in
support of the rejection:
Conti US 6,816,071 B2 Nov. 9, 2004

Appeal 2009-008712
Application 11/126,115

4
Regen US 2005/0130471 A1 June 16, 2005
(filed Dec. 9, 2004)

Hong US 7,124,238 B2 Oct. 17, 2006
(pub. July 22, 2004)

Rejections on Appeal
1. The Examiner rejects claims 12 and 14-21 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
2. The Examiner rejects claims 22-25 and 27 under 35 U.S.C.
§ 102(e) as being anticipated by Hong.
3. The Examiner rejects claim 26 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hong and Conti.
4. The Examiner rejects claims 12, 14-16, 18, and 19 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Regen and
Hong.
5. The Examiner rejects claims 12 and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Regen and Conti.

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in rejecting the recitation of “another
device” in claims 12 and 14-21 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement?
Appeal 2009-008712
Application 11/126,115

5
2. Does the Examiner err in finding that Hong discloses
“calculating, by the device, memory statistics describing the current state of
memory usage of the keydrive” as recited in claim 22?
3. Does the Examiner err in concluding that the combination of
Regen and Hong would have collectively taught or fairly suggested:
storing memory statistics received from another device in
memory on the keydrive, . . .
. . . .
wherein the another device further comprises a processor and
computer memory operatively coupled to the processor, the
device’s computer memory having stored within it computer
program instructions capable of:
. . . .
calculating the memory statistics describing the current state of
memory usage of the keydrive, and
storing the memory statistics in memory on the keydrive.
as recited in claim 12?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Patent and Trademark
Office).
Appellants’ Specification
1. Appellants do not specifically define a “device” (as recited in
claim 22) or “another device” (as recited in claim 12) in the Specification.
See generally Spec 1-15. Appellants, however, illustrate an “other device”
Appeal 2009-008712
Application 11/126,115

6
(element 702) in Figure 7 and describe “calculating (306) memory statistics
(308) describing the current state of memory usage of the keydrive (102)
may be carried out by a more robust computer to which the keydrive is
connected” and further “calculating (306) memory statistics (308) describing
the current state of memory usage of the keydrive (102), and storing (312)
the memory statistics in memory on the keydrive are carried out by another
device (702) to which the keydrive is coupled for data communications.”
(Spec. 14: 9-11, 15-17; see Figs. 1, 7.)

Hong Reference
2. Hong describes “a USB flash memory device including a non-
volatile memory device for providing memory storage capacity.” (Col. 1, ll.
8-10.) Hong explains that calculating the memory capacity of a flash
memory device by a host platform is known in the art:
When the USB flash memory device 46 is coupled to the
host platform 44, a standard USB process is established.
During the USB process, the host platform 44 configures the
arrangement of the USB flash memory device 46 and the data
transfer mode with the USB flash memory device 46. During
the course of the configuration, the host platform 44 determines
the overall storage capacity of the USB flash memory device 46
and determines the remaining, unused, capacity. In this
manner, information related to the storage capacity of the USB
flash memory device 46 is determined by directly connecting
the USB flash memory device 46 to the USB host connector 50
of the host platform 44.
(Col. 1, ll. 52-63; see Fig. 1.)
3. Hong also describes a USB controller calculating a memory
capacity of a flash memory module and a USB flash memory device
displaying in a display the memory storage capacity. (Abstract; col. 2, l. 7 to
Appeal 2009-008712
Application 11/126,115

7
col. 3, l. 15; col. 4, ll. 24-42; col. 5, ll. 11-16; Figs. 2, 3.) Hong describes
that “[t]he USB controller calculates the memory storage capacity of the
flash memory module” (col. 2, ll. 44-45) and further explains that:
While writing data to the flash memory module 240, the
last occupied address is stored in flash memories of the USB
controller 220 and the flash memory module 240. The USB
controller 220 calculates and compares the last address stored
with the overall memory capacity of the flash memory module
240 and stores the result of the comparison in a usage display
register. The memory storage capacity represents, for example,
the amount of memory capacity that is currently used and how
much usable memory capacity remains. The content of the
usage display register is transmitted to a display window 260
through a display controller 250.
(Col. 4, ll. 24-35; see Figs. 2, 3.)
Regen Reference
4. Regen describes a thumb drive having a retractable USB
connector and a display, which can operate to play music files (MP3 files).
(¶¶ [0019], [0041]; see Figs. 1a-1c, 5.) Regen explains that:
[A] thumb drive 501 may also operate as a music repository and
player, such as an MP3 player. In this embodiment the memory
capacity of the thumb drive is controlled in the same manner
that is done in the art for MP3 players and the like, so that
music and other audio material may be downloaded to the
unique thumb drive from a computer device, and may be played
back to a user. For this purpose a display 502 is provided . . .
and additional firmware for internal microprocessor control is
provided to manage storage of audio files, such as MP3 files,
for songs, and to display and render the songs at a user’s
command.

(¶ [0041]; see Fig. 5.)

Appeal 2009-008712
Application 11/126,115

8
ANALYSIS
We address Appellants’ arguments seriatim, infra, in the order argued
by Appellants. Appellants argue independent claim 22 together with
dependent claims 23-25 and 27 as a group based on claim 22. (Br. 6-10.)
Appellants also provide separate arguments for dependent claim 26. (Br. 10-
12.) Appellants also argue independent claim 12 together with dependent
claims 14-16, 18, and 19 as a group based on claim 12. (Br. 12-13.)
Additionally, Appellants provide nominal separate arguments for
independent claim 12 and dependent claim 17, which they argue together as
a group. (Br. 14-15.) Therefore, we select claims 12, 22, and 26 as
representative of Appellants’ arguments and groupings. 37 C.F.R.
§ 41.37(c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
We have considered only those arguments that Appellants have actually
raised in their Brief. Arguments that Appellants could have made but chose
not to make in the Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants have the opportunity on appeal to the BPAI to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of the written description
(§ 112, first para.), anticipation, and obviousness rejections in the
Examiner’s Answer with respect to each of the claims (Ans. 3-18) and, in
particular, claim 12 (Ans. 3-4, 9-13 (§ 112) and 7-8, 17-18 (§ 103)), claim
22 (Ans. 4-5, 13-17), and claim 26 (Ans. 6). Therefore, we look to the
Appellants’ Briefs to show error in the proffered findings and conclusions.
See Kahn, 441 F.3d at 985-86.
Appeal 2009-008712
Application 11/126,115

9
Arguments Concerning the Examiner’s Rejection
of Representative Claim 12 Under § 112
The Examiner rejects Appellants’ independent claim 12 as being
failing to comply with the written description requirement of § 112, first
paragraph. (Ans. 3-4, 9-13.) Specifically, the Examiner submits that
Appellants’ claimed “another device,” and in particular the nature or
structure of the device, is not described in the Specification in such a way as
to reasonably convey to one skilled in the relevant art that the inventors, at
the time the application was filed, had possession of the claimed invention.
(Ans. 3-4.)
Appellants contend that the Specification describes the recited feature
in such a way as to reasonably convey to one skilled in the relevant art that
they (the inventors) had possession of “a keydrive capable of receiving
memory statistics from another device that includes ‘a processor and
computer memory operatively coupled to the processor,’” in that the
Specification describes in “Figure 7 and the accompanying description at
page 14, lines 3-22” the “‘another device’ as a computer to which the
keydrive is coupled for data communications.” (Br. 5.) Appellants further
submit that the Specification “at Figure 1 and the accompanying description
at page 6, lines 18-20, . . . illustrate[s] and describe[s] several exemplary
devices capable of accepting a keydrive. These exemplary devices include a
digital camera, a personal computer, a mobile phone; a workstation, and a
personal digital assistant.” (Id.)
Based on the record before us, we find error in the Examiner’s written
description rejection of representative claim 12. We agree with Appellants
that the illustration of an “other device” in Figure 7 and the description of
“another device” as “a more robust computer to which the keydrive is
Appeal 2009-008712
Application 11/126,115

10
connected” (Spec. 14: 9-11, 15-17) would have conveyed possession to one
skilled in the art. (FF 1.) “Adequate written description means that, in the
specification, the applicant must ‘convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the [claimed] invention.’” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed.
Cir. 2007) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991). Here, the disclosure of a computer would have conveyed
possession of a device (another device) including a processor and memory
coupled thereto.
Consequently, we are constrained by the record before us to conclude
that Appellants’ Specification would have conveyed with reasonable clarity
to those skilled in the art that, as of the filing date sought, the inventors were
in were in possession of the claimed “another device.” It follows that
Appellants persuade us of error in the Examiner’s written description
rejection of representative claim 12 and dependent claims 14-21 argued with
claim 12. Accordingly, we reverse the Examiner’s § 112, first paragraph
rejection of claims 12 and 14-21.
Arguments Concerning the Examiner’s Rejection
of Representative Claim 22 Under § 102
The Examiner rejects Appellants’ independent claim 22 as being
anticipated by Hong. (Ans. 4-5, 13-17.) Specifically, the Examiner submits
that Hong describes a computer program product for displaying memory
storage capacity information (memory statistics) for a USB flash memory
device (keydrive) having instructions for calculating, by a device (USB
controller), the memory storage capacity of the flash memory device
(memory statistics describing the current state of memory usage of the
Appeal 2009-008712
Application 11/126,115

11
keydrive) and displaying the memory storage capacity in a display on the
flash memory device. (Ans. 5, 14-16 (citing Hong, col. 3, ll. 63-66; col. 4,
ll. 24-42; col, 5, ll. 11-16; Fig. 2).) The Examiner also submits that the
“claim does not require this device to be different from or external to the
keydrive .” (Ans. 5.)
Appellants contend that Hong does not disclose “calculating, by the
device, memory statistics describing the current state of memory usage of
[the] keydrive” and that “Hong’s data storage information is determined by
Hong’s keydrive itself – not a separate and distinct device as claimed in the
present application.” (Br. 8.)
Based on the record before us, we do not find error in the Examiner’s
anticipation rejection of representative claim 22. We agree with the
Examiner that Hong discloses a device that calculates memory statistics and
that the claim does not require the device be distinct from the keydrive.
(Ans. 4-5, 13-17; FF 2-3.)
Appellants do not define, either in their Specification or the claims,
the term “device.” (FF 1.) Moreover, the claim places no limits on structure
of the device or the keydrive. Rather, the claims recite purely functional
limitations with respect to the device. Thus, we broadly but reasonably
construe the “device” to be any apparatus, article, or object capable of
performing the functionality recited in the claim – receiving a command,
calculating memory statistics, and storing the memory statistics (causing the
memory statistics to be stored).
We find that Hong describes a USB flash memory device including a
flash memory module a USB controller, and a display. The USB controller
receives instructions, calculates a memory capacity of the flash memory
Appeal 2009-008712
Application 11/126,115

12
module, and stores calculations in a usage display register (memory within
the USB flash memory device). A display controller then transfers the
results in the register to the display. (FF 3.) Further, Hong discloses that
calculating the memory capacity of a flash memory device by a separate
device (a host platform) is known in the art. (FF 2.) In view of our claim
construction (above) we find Hong discloses a device (a USB controller) that
performs the recited functionality of claim 22. Nothing in claim 22 requires
that the “device” be “separate and distinct” from the keydrive.
We find Appellants’ contrary arguments unpersuasive of error in the
Examiner’s rejection for the reasons explained above. In particular, we note
that Appellants’ arguments are not commensurate with the scope of claim
22. Further, Appellants failed to file a Reply Brief to rebut the findings and
responsive arguments made by the Examiner in the Answer. It follows that
Appellants do not persuade us of error in the Examiner’s anticipation
rejection of representative claim 22. Appellants also do not persuade us of
error in the Examiner’s anticipation rejection of dependent claims 23-25 and
27, not separately argued with particularity (supra). Accordingly, we affirm
the Examiner’s anticipation rejection of claims 22-25 and 27.
Arguments Concerning the Examiner’s Rejection
of Claim 26 Under § 103
The Examiner rejects Appellants’ dependent claim 26 as being
obvious over Hong and Conti. (Ans. 6.) Specifically, the Examiner submits
that Conti describes calculating memory statistics including a percentage of
memory used. (Id.) Appellants reiterate that Hong does not disclose all the
recited features of claim 22 and 26, and contend that Conti does not cure the
deficiencies of Hong. Specifically, Appellants contend that Conti does not
Appeal 2009-008712
Application 11/126,115

13
disclose, teach, or suggest a keydrive or a separate and distinct device which
calculates memory statistics. (Br. 11.)
Based on the record before us, we do not find error in the Examiner’s
obviousness rejection of claim 26. We agree with the Examiner that Conti
describes calculating a percentage of memory used. (Ans. 6.) Appellants do
not dispute that Conti describes this feature. Rather, Appellants simply
reiterate their arguments made with respect to claim 22 and Hong. (Br. 11.)
Appellants cannot show non-obviousness by attacking references
individually instead of addressing the combination of references. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (noting that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)). Accordingly, Appellants do not persuade us
of error in the Examiner’s obviousness rejection of claim 26 and we affirm
the Examiner’s rejection of the claim.
Arguments Concerning the Examiner’s Rejection
of Representative Claim 12 Under § 103
The Examiner rejects Appellants’ independent claim 12 as being
obvious over Regen and Hong. (Ans. 7-8, 17-18.) Specifically, the
Examiner submits that Regen describes a device (another device) including a
processor and memory capable of receiving a command, calculating memory
statistics, and storing the memory statistics. (Ans. 7-8 (citing Regen, ¶
[0041]).) The Examiner further asserts that the claim does not require the
“another device” be separate and distinct from the keydrive. (Ans. 18.)
Appellants contend that Regen does not disclose, teach, or suggest another
Appeal 2009-008712
Application 11/126,115

14
device, separate and distinct from a keydrive (thumb drive) for calculating
and storing memory statistics of the keydrive.
Based on the record before us, we agree with Appellants and find
error in the Examiner’s obviousness rejection of representative claim 12.
Claim 12 recites:
a computer memory . . . having disposed within it a memory
statistics module, the memory statistics module comprising
computer program instructions capable of:
storing memory statistics received from another device in
memory on the keydrive, and
. . . .
wherein the another device further comprises a processor and
computer memory operatively coupled to the processor, the
device’s computer memory having stored within it computer
program instructions capable of:
receiving a command resulting in a change to the memory
usage of the keydrive,
calculating the memory statistics describing the current state of
memory usage of the keydrive, and
storing the memory statistics in memory on the keydrive.

(Br. 18, claim 12) (emphasis added.)
As with claim 22, Appellants do not define, either in their
Specification or the claims, the term “another device.” (FF 1.) However,
the plain meaning of “another” signifies something that is “not the same.”
Webster’s New World College Dictionary, 4th Ed. (1999), available at
http://www.yourdictionary.com/another. Further, in contrast to claim 22,
claim 12 does place limits on structure of the “another device.” Claim 22
requires another device with memory containing instructions for receiving a
Appeal 2009-008712
Application 11/126,115

15
command, calculating memory statistics, and storing the memory statistics.
Thus, we broadly but reasonably construe the “another device” to be an
apparatus, separate from a key drive, including memory containing
instructions for performing the functionality recited in the claim – receiving
a command, calculating memory statistics, and storing the memory statistics.
We disagree with the Examiner that claim 12 does not require a
separate device. Moreover, it is unclear from the Examiner’s discussion of
Conti exactly what constitutes the “another device.” (See Ans. 7-8, 18.) We
understand the Examiner to interpret the “computer device” (Regen, ¶
[0041]) as the “another device.” Although Regen describes a thumb drive
and a separate computer device that downloads MP3 music files to the
thumb drive (FF 4), Regen does not describe the computer device
calculating or downloading thumb drive memory statistics to the thumb
drive. The Examiner’s supposition that the computer is capable of
calculating memory statistics of the thumb drive (Ans. 7-8) is unsupported
by any evidence in the record. Absent some additional explanation to
support the Examiner’s findings and conclusions, we cannot agree that
Regen’s general disclosure of a thumb drive and a computer device
downloading files to the thumb drive would have taught or suggested
Appellants’ recited claim features.
Consequently, we are constrained by the record before us to conclude
that the Regen (and Regen and Hong collectively) would not have taught or
suggested the disputed features of Appellants’ claim 12 to one of ordinary
skill in the art at the time of Appellants’ invention. Therefore, the rejection
of claim 12 fails to establish a prima facie case of obviousness.
Appeal 2009-008712
Application 11/126,115

16
It follows that Appellants persuade us of error in the Examiner’s
obviousness rejection of representative claim 12. Appellants also persuade
us of error in the Examiner’s obviousness rejection of dependent claims 14-
16, 18, and 19 argued with claim 12 (supra). Accordingly, we reverse the
Examiner’s obviousness rejection of claims 12, 14-16, 18, and 19.
The Examiner’s Rejection of Claims 12 and 17
Under § 103
The Examiner also rejects independent claim 12 and dependent claim
17 as obvious over Regen and Conti. (Ans. 9.) Appellants separately argue
this rejection (supra). Claim 17 depends on claim 12 – discussed supra with
respect to Regen. Conti, discussed with respect to claim 26 (supra), does
not cure the deficiencies noted with respect to Regen and claim 12. It
follows that Appellants also persuade us of error in the Examiner’s
obviousness rejection of claim 17. We reverse the Examiner’s obviousness
rejection of the claims 12 and 17 under § 103(a).

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
22-25 and 27 under 35 U.S.C. § 102(e) and claim 26 under 35 U.S.C.
§ 103(a).
Appellants have shown that the Examiner erred in rejecting claims 12
and 14-21 under 35 U.S.C. § 112, first paragraph.
Appellants have shown that the Examiner erred in rejecting claims 12
and 14-19 under 35 U.S.C. § 103(a).

Appeal 2009-008712
Application 11/126,115

17
DECISION
We affirm the Examiner’s rejection of claims 22-25 and 27 under 35
U.S.C. § 102(e).
We affirm the Examiner’s rejection of claim 26 under 35 U.S.C.
§ 103(a).
We reverse the Examiner’s rejection of claims 12 and 14-21 under 35
U.S.C. § 112, first paragraph.
We reverse the Examiner’s rejection of claims 12 and 14-19 under 35
U.S.C. § 103(a).
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-IN -PART

llw