Ex Parte Becker et al

Patent Trial and Appeal Board

Aug 3, 2016

10335139 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/335,139 12/31/2002
124746 7590 08/05/2016
Wolfe-SBMC
116 W. Pacific A venue
Suite 300
Spokane, WA 99201
FIRST NAMED INVENTOR
Christopher Becker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10260600US 5540
EXAMINER
SAMS, MATTHEW C
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
08/05/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER BECKER, MICHAEL DOLL, and
JOSEPH HANSEN
Appeal2015-003943
Application 10/335,139
Technology Center 2600
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
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Application 10/335,139
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 1-11 (App. Br. 11):
Claims 1-3, 5, 7, and 11 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Murakami (US 6,886,083 B2; issued Apr. 26, 2005). Final
Act. 4--7.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Murakami and Lanet (US 6,408,058 B 1; issued June 18, 2002).
Final Act. 7-8.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Murakami. Final Act. 8.
Claim 8-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Murakami and Moore (US 6,378,011 Bl; issued Apr. 23, 2002).
Final Act. 8-9.
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellants, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We reverse.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
March 14, 2014 ("Final Act."); (2) the Advisory Action mailed June 25,
2014 ("Adv. Act."); (3) the Appeal Brief filed October 8, 2014 ("App. Br.");
(4) the Examiner's Answer mailed December 15, 2014 ("Ans."); and (5) the
Reply Brief filed February 12, 2015 ("Reply Br.").
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Application 10/335,139
SUMMARY OF THE INVENTION
Appellants' invention queues commands from a portable device, such
as a cell phone, to a multimedia storage device, such as a secure digital
(SD)2 card. See Abstract; Spec. iii! 1-2. The multimedia storage device's
slow command-execution and data rates can, in tum, slow down a coupled
portable device. Id. if 2. Allowing the portable device to send commands to
the multimedia device at any time-instead of requiring the portable device
to wait for the previously issued commands to complete-would improve
performance. See id. if 3, Abstract. In one embodiment, the portable
device's processor notifies a second processor about data requests to the
multimedia storage device. Id. if 18. The second processor then oversees
the data transfer from the multimedia storage device. Id.
Independent claim 1 illustrative:
1. A portable electronic device, couplable to a multi-media
storage device having a processor therein that executes
commands, comprising:
a multi-media device interface located within the portable
electronic device and comprising:
a command processor, external to the multi-media storage
device and within the portable electronic device, operative to
receive commands executable by the multi-media storage device,
from a controller within said portable electronic device and
forwards 3 the commands to the multi-media storage device
operatively couplable to said portable electronic device;
2 SD cards are secure, portable memory cards that incorporate flash memory.
Murakami, col. 1, 11. 21-28.
3 We understand claim 1 to include a grammatical error, intending to recite
"a command processor ... , operative to receive commands ... and
forwards [sic: forward] the commands .... " Were the plural form,
"forwards," actually intended, the claim language might raise a question of
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a command queuing buffer, in the portable electronic
device, operably coupled to said command processor and capable
of being coupled to a multi-media storage device, said command
queuing buffer operative to store commands executable by said
multi-media storage device sent from the controller within the
portable electronic device;
a multi-media interface controller, in the portable
electronic device, operably coupled to said command processor
and to said command queuing buffer, said multi-media interface
controller operative to identify commands from said portable
electronic device to be stored in said command queuing buff er
and operative to control when commands are sent to the multi-
media storage device from the command query buffer.
THE ANTICIPATION REJECTION OVER MURAKAMI
Contentions
The Examiner finds that Murakami teaches every feature of claim 1.
Final Act. 4---6. According to the Examiner, Murakami embeds host
controller 121 in host apparatus 11, forming a single integrated apparatus.
Ans. 2 (citing Murakami Fig. 1, col. 14, 11. 48-51 ). The Examiner finds that
this integrated apparatus corresponds to the recited portable electronic
device. Ans. 2. The Examiner further finds that Murakami's integrated
apparatus includes a universal serial bus (USB) storage-class drive 114, USB
driver 115, and USB controller 116. Id.; see also Adv. Act. According to
the Examiner, Murakami's elements 114, 115, and 116 collectively
whether a method step is intended to be recited within a product claim, and,
thereby, raise a question of whether claim 1 is effectively an improper
hybrid apparatus-method claim. See Rembrandt Data Techs., LP v. AOL,
LLC, 641F.3d1331, 1339 (Fed. Cir. 2011) (holding as indefinite under
35 U.S.C. § 112, i-f 2, an apparatus claim reciting an active transmitting step).
We leave it to Appellants and the Examiner to address this matter.
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Application 10/335,139
correspond to the recited multimedia-interface controller. Final Act. 5---6;
Ans. 2.
Among other arguments, Appellants contend that Murakami' s
integrated embodiment lacks the recited multimedia-interface controller.
App. Br. 3-5; Reply Br. 4--5. According to Appellants, Murakami says
nothing about using elements 114, 115, and 116--the structure that the
Examiner maps to the multimedia-interface controller-in the integrated
host apparatus 11. Reply Br. 5. In Appellants' view, integrating devices 11
and 12 eliminates the need for Murakami USB interface. Id.
Issue
Has the Examiner established by a preponderance of the evidence that
Murakami discloses the multimedia-interface controller recited in claim 1?
Analysis
Murakami discloses two embodiments-a non-integrated embodiment
where adapter 12 includes contro Iler 121, separate from host apparatus 11
(see Murakami Fig. 1) and another, integrated embodiment where apparatus
11 and controller 121 are integrated (id. col. 14, 11. 48-51). Although the
Examiner's rejection, as set forth in the Final Action, cites only elements 12
and 121 as corresponding to the recited multimedia-device interface
(Final Act. 5), the Examiner clarifies in the Answer that it is Murakami' s
integrated embodiment (Murakami col. 14, 11. 48-51) that allegedly
anticipates claim I-not the non-integrated embodiment. Ans. 2-5; see also
Adv. Act. Accordingly, we confine our discussion to the explanation stated
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Application 10/335,139
in the Answer (Ans. 2-5) based on Murakami's integrated embodiment
(Murakami col. 14, 11. 48-51).
We agree with Appellants that the Examiner has not shown that
Murakami's integrated embodiment has the recited multimedia-interface
controller. App. Br. 4; Reply Br. 5. Before addressing Murakami's
teachings regarding the integrated embodiment, we first address the
non-integrated embodiment.
In the non-integrated embodiment, Murakami's host apparatus 11 is
connected to SD-card adapter 12 by a USB cable. Murakami col. 3, 11. 27-
30. In particular, the cable is connected to host apparatus 11 's USB
controller 116. Id. col. 3, 11. 26-29. Because SD-card adapter 12 is a USB
device, access commands are submitted as USB packets. Id. col. 8, 11. 50-
54. USB storage-class driver 114 generates these access commands and
sends them to SD adapter 12 via USB driver 115. Id. col. 3, 11. 60-65.
The Examiner remarks that a large box can be drawn around
components 11 and 12. Ans. 2. This remark suggests that the Examiner
finds that the integrated embodiment includes all elements in Figure 1. See
id. By this reasoning, Murakami' s USB cable and associated interface
elements 114, 115, and 116---all shown in Figure I-are included in the
integrated apparatus. See Murakami Figure 1.
But Murakami does not support the Examiner's reasoning.
Specifically, Murakami makes a card slot in the integrated-version of host
apparatus 11. Id. col. 14, 11. 50-51. The user then inserts memory card 13
into apparatus 11 's slot. See id. That is, memory card 13 and the device that
reads it are housed within host apparatus 11. Id. But the Examiner never
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explains why a USB cable and its associated interface would be required for
this internal component. See Final Act. 4---6; Ans. 2--4.
Moreover, Murakami states that host controller 121 is incorporated in
apparatus 11. Id. col. 14, 11. 48--49. But in describing this embodiment,
Murakami does not mention external adapter 12. See id. col. 14, 11. 48--49.
Apart from citing adapter 12 in the rejection (see Final Act. 5), the Examiner
does not explain why this adapter would necessarily exist within
Murakami's integrated version. See Ans. 2---6. Notably, integrated
apparatus 11 already contains a logical interface-i.e., host controller 121-
for communications between apparatus 11 and memory card 13.
Murakami col. 4, 11. 54--56. SD-card adapter 12 is merely a USB device
containing that interface in the non-integrated embodiment. Id. col. 8,
11. 50-54. Apart from connecting apparatus 11 to memory card 13 in the
non-integrated embodiment, we see nothing on this record to suggest
Murakami;s relied-upon USB functions are needed to access memory card
13 in the integrated embodiment.
On the contrary, Murakami discloses that the USB driver's commands
are not required to access all memory areas. Specifically, memory card 13
has a storage area for user data and a secure area for protected data.
Id. col. 3, 11. 34--36. To access these areas, Murakami provides two
command types: storage and direct. Id. col. 4, 11. 1-32. The USB
storage-class driver 114's commands are called storage commands. See
id. col. 4, 11. 6-9. These commands can only access storage area 131. See
id. Using direct commands, host apparatus 11, however, can access either
memory area. Id. col. 14, 11. 53-57. That is, apparatus 11 can fully access
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memory card 13 's data without USB storage-class driver 114' s commands.
See id.
Moreover, Murakami discloses an embodiment that uses only direct
commands. Id. col. 14, 11. 53-57. The existence of this embodiment (id.)
further weighs against the Examiner's position that the USB driver 114 is
necessarily present (see Ans. 2).
On this record, the Examiner has not shown that Murakami' s
USE-related elements 114, 115, and 116--mapped to the recited
multimedia-interface controller-are present, expressly or inherently, in the
relied-upon embodiment. See Final Act. 5---6. Accordingly, the Examiner
has not established that Murakami anticipates claim 1.
For these reasons, we will not sustain the Examiner's rejection of
claim 1 (Final Act. 4---6). Nor do we sustain the rejection of dependent
claims 2, 3, 5, 7, and 11, which are based on the Examiner's rationale for
claim 1 (see id. at 6-7; Ans. 4--5).
THE OTHER OBVIOUSNESS REJECTIONS
We, likewise, do not sustain the Examiner's rejections of dependent
claims 4, 6, and 8-10 (Final Act. 7-9) for the same reasons discussed above
in connection with claim 1. Neither the additional references, Lanet and
Moore, nor the Examiner's findings regarding shift registers were relied
upon to teach the recited multi-media interface controller, which is missing
from claim 1. See id. Accordingly, these references and findings do not
cure the deficiency explained previously.
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DECISION
The Examiner's decision rejecting claims 1-11 is reversed.
REVERSED
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