Ex Parte Ahlgren

Patent Trial and Appeal Board

Jun 24, 2013

11469726 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/469,726 09/01/2006 Anders Erik Ahlgren PS05 0994US2 6884
58561 7590 06/25/2013
HARRITY & HARRITY, LLP
11350 RANDOM HILLS ROAD
SUITE 600
FAIRFAX, VA 22030
EXAMINER
PENG, HUAWEN A
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
06/25/2013 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
____________

Ex parte ANDERS ERIK AHLGREN
____________

Appeal 2010-010928
Application 11/469,726
Technology Center 2100
____________

Before JOHN A. JEFFERY, BARBARA A. BENOIT, and DANIEL N.
FISHMAN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-15, 17, 18, and 20-25. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention enables users to provide additional information
related to stored data files on a removable storage medium equipped with a
near-field communication unit. See generally Spec. ¶¶ 0007-40. Claim 8 is
illustrative:
8. A data processing device to be connected to a removable storage
medium equipped with a near field communication unit, comprising:
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an electrical interface to the storage medium;

an interface to the near field communication unit;

a user interface for receiving inputs from a user; and

a control unit to:

store data files on the storage medium when said storage
medium is connected to the electrical interface,

receive additional data from the user via the user interface, the
near field communication unit permitting the additional data to be
read when the storage medium is not connected to the electrical
interface; and

store said additional data in the near field communication unit
via the second interface.

THE REJECTIONS
1. The Examiner rejected claims 8-14 under 35 U.S.C. § 102(e) as
anticipated by Skaar (US 2005/0152670 A1; published July 14, 2005). Ans.
3-7.1
2. The Examiner rejected claims 1-7, 15, 17, 18, and 20-25 under
35 U.S.C. § 103(a) as unpatentable over Skaar and Phillips (US
2004/0152493 A1; published Aug. 5, 2004). Ans. 8-29.

THE ANTICIPATION REJECTION
The Examiner finds that Skaar discloses every recited element of
independent claim 8 including a user interface for receiving user inputs,

1 Throughout this opinion, we refer to the Appeal Brief filed March 23, 2010
(“Br.”) and the Examiner’s Answer mailed May 11, 2010 (“Ans.”).
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namely a memory card reader that enables users to write data to a removable
memory element. Ans. 3-5, 30.
Appellant argues that Skaar does not disclose a user interface for
receiving user inputs, let alone a control unit to receive additional data from
the user via this interface as claimed. Br. 13-16. Appellant adds that Skaar
also lacks a control unit to automatically fetch at least some of the additional
data as recited in claim 9. Br. 16-17.

ISSUES
Under § 102, has the Examiner erred by finding that Skaar discloses:
(1) a user interface for receiving user inputs, and a control unit to
receive additional data from the user via this interface as recited in claim 8?
(2) a control unit to automatically fetch at least some of the additional
data as recited in claim 9?

ANALYSIS
Claims 8 and 14
We sustain the Examiner’s rejection of representative claim 8.
Despite Appellant’s arguments to the contrary (Br. 13-14), Appellant does
not persuasively rebut the Examiner’s finding that Skaar’s memory card
reader functions as a “user interface” for receiving user inputs, namely the
user’s writing data to the memory element via the reader. Ans. 30 (citing
Skaar ¶ 0059). We likewise see no error in the Examiner’s position that
there would also be a control unit to receive additional data from the user via
the interface. Ans. 4-5, 30.
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We are therefore not persuaded that the Examiner erred in rejecting
representative claim 8, and claim 14 not separately argued with
particularity.2

Claims 9-13
We also sustain the Examiner’s rejection of representative claim 9
reciting a control unit to automatically fetch at least some of the additional
data.3 Appellant does not persuasively rebut the Examiner’s finding that
Skaar’s tape drive 100 that automatically writes data to tape media 116
and/or auxiliary memory element 300 automatically fetches that data. Ans.
6, 30-31 (citing Skaar ¶¶ 0064-65). Even assuming that writing and fetching
are opposite operations as Appellant contends (Br. 17), we still see no error
in the Examiner’s position, for the information automatically written by
Skaar’s tape drive noted above is also retrieved (i.e., fetched) from at least
the memory element. Skaar ¶ 0065.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 9, and claims 10-13 not separately argued with
particularity.

2 We note in passing that no antecedent basis exists for “the second
interface” in the last clause of claim 8.
3 Although claim 9 contains an apparent typographical error, namely that the
“control unit is further to automatically fetch” [sic], we presume that the
phrase was intended to mean that the control unit is further configured to
automatically fetch.
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THE OBVIOUSNESS REJECTION
The Examiner finds that Skaar discloses every recited element of
claim 1 except for performing the data-file storage and option-providing
steps when the removable storage medium is connected to the data
processing device, but cites Phillips for teaching this feature in concluding
that the claim would have been obvious. Ans. 8-11, 31-32.
Appellant argues that the Examiner’s reliance on Phillips is misplaced
since Phillips merely attaches a hard disk drive to an alert distribution
device, and has nothing to do with providing a user with an option to provide
user-selected additional data when the storage medium is connected to the
data processing device as claimed. Br. 18-21. Appellant adds the
Examiner’s reason to combine Phillips and Skaar is merely conclusory and
therefore insufficient. Br. 21-22. Appellant also argues various other
recited limitations summarized below.

ISSUES
I. Under § 103, has the Examiner erred by finding that Skaar and
Phillips collectively would have taught or suggested:
(1) providing a user with an option to provide user-selected additional
data relating to at least some stored data files when the removable storage
medium is connected to the data processing device as recited in claim 1?
(2) automatically fetching at least some of the additional data as
recited in claim 2?
(3) presenting the additional data on an information presenting unit of
the data processing device, where the additional data indicates at least one of
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(a) a context of at least some of the data files, or (b) an associated name,
label, or meta data as recited in claim 17?
II. Is the Examiner’s combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
Claims 1, 7, and 15
We sustain the Examiner’s rejection of representative claim 1 reciting,
in pertinent part, providing a user with an option to provide user-selected
additional data relating to at least some stored data files when the removable
storage medium is connected to the data processing device. Appellant does
not persuasively rebut the Examiner’s reliance on Skaar’s card reader
functionality for teaching the non-italicized portion of the disputed limitation
above, namely providing the user with an option to provide user-selected
additional data. See Ans. 8 (citing Skaar ¶ 0059). Rather, Appellant
disputes the Examiner’s reliance on Phillips for teaching the italicized
portion of the limitation above and the Examiner’s stated reason to combine
the references. See Br. 18-22.
Although Phillips’ alert system is somewhat different than Skaar’s
tape cartridge, we nonetheless see no error in the Examiner’s reliance on
Phillips for the limited purpose for which it was cited, namely merely to
show that it is known to provide users with options to provide additional
data via various interfaces when a storage medium is connected to a data
processing device, and that this temporal aspect would have been obvious in
Skaar’s system which likewise enables users to enter additional data as noted
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above. See Ans. 31 (citing Phillips ¶ 0051). We see no reason why
providing such a temporal enhancement in Skaar does not predictably use
prior art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
And since there are only two pertinent temporal possibilities when providing
the recited option to provide additional data, namely when the storage
medium is connected to the data processing device or when it is not, it would
have been obvious to try this finite number of identified predictable
solutions. See id. at 421.
Appellant’s contention regarding the Examiner’s alleged piecemeal
examination of claim 1’s disputed feature is unavailing, as is Appellant’s
reliance on MPEP § 2106 II(C) for this contention. Br. 19. Notably, this
authority is directed to patent eligibility under § 101—not obviousness under
§ 103. See id. Nevertheless, to the extent that this section also applies to
obviousness determinations, we are unpersuaded of error in the Examiner’s
position for the above-noted reasons. We therefore find the Examiner’s
combining the teachings of Skaar and Phillips supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 7 and 15 not separately argued with
particularity.4

4 Although Appellant nominally argues claim 15 separately (Br. 24-27),
these arguments are similar to those presented previously.
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Claims 2-6
We also sustain the Examiner’s rejection of representative claim 2
reciting automatically fetching at least some of the additional data. Ans. 11,
32-33. Appellant reiterates similar arguments made in connection with
claim 9 which we find unpersuasive for the reasons previously discussed.
Br. 22-24. We are therefore not persuaded that the Examiner erred in
rejecting representative claim 2, and claims 3-6 not separately argued with
particularity.

Claims 17, 18, and 20-25
We also sustain the Examiner’s rejection of representative claim 17
reciting, in pertinent part, presenting the additional data on an information
presenting unit of the data processing device, where the additional data
indicates at least one of (1) a context of at least some of the data files, or (2)
an associated name, label, or meta data. Ans. 16-19, 34-36. Appellant does
not persuasively rebut the Examiner’s reliance on Skaar for the recited
additional data indications, but rather contends that Phillips’ flashing an
LED and displaying an alert message upon receiving an alert does not teach
or suggest presenting additional information associated with data files as
claimed. Br. 28-30 (citing Phillips ¶ 0058).
Despite Appellant’s arguments to the contrary, we see no error in the
Examiner’s reliance on Phillips’ displaying text messages on a screen for
teaching presenting additional data on an information presenting unit as
claimed. Ans. 35-36. To the extent that Appellant argues that the content of
this displayed information is not associated with data files as claimed, the
Examiner relied on Skaar—not Phillips—for that feature. See Ans. 35. In
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any event, this informational content constitutes non-functional descriptive
material that does not patentably distinguish over prior art that otherwise
renders the claims unpatentable.5 We also find Appellant’s combinability
arguments unavailing (Br. 30-31) since the Examiner’s combining the
teachings of Skaar and Phillips is supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion. Ans. 18-19, 36.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 17, and claims 18 and 20-25 not separately argued with
particularity.6

CONCLUSION
The Examiner did not err in rejecting (1) claims 8-14 under § 102, and
(2) claims 1-7, 15, 17, 18, and 20-25 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-15, 17, 18, and 20-25 is
affirmed.

5 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material).
6 Although Appellant nominally argues claims 18, 23, and 24 separately (Br.
31-41), these arguments are similar to those presented previously.
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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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