Ex Parte ChanDownload PDFPatent Trial and Appeal BoardSep 14, 201813568930 (P.T.A.B. Sep. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/568,930 08/07/2012 21839 7590 09/18/2018 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Kam Fu Chan 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. 0079232-000005 4912 EXAMINER HUYNH,KIMT ART UNIT PAPER NUMBER 2185 NOTIFICATION DATE DELIVERY MODE 09/18/2018 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAM FU CHAN Appeal2018-001292 Application 13/568,930 1 Technology Center 2100 Before JENNIFER S. BISK, JUSTIN BUSCH, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-22, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies Kam Fu Chan as the real party in interest. App. Br. 2. Appeal2018-001292 Application 13/568,930 STATEMENT OF THE CASE Introduction According to the Specification, the present invention relates to connecting mass storage device( s) for use by running operating systems in computers (used hereafter as including computer- related or computer-controlled or operating-system-controlled machines or devices); facilitating the removal and insertion or disconnection and connection of such mass storage device( s) which is/are conventionally considered "Fixed" and not "Hot- Swappable" for use in running computers. Spec. 1. Claim 1 is exemplary: 1. A hot-swappable mass storage device comprising a power port and a data port, the mass storage device being connectable to a computing device having access to a non- transitory computer-readable storage medium having stored thereon, computer-executable program code, that, if executed by the computing device, causes the computing device to perform operations comprising: accepting a connection of the data port to a data bus of an interface provided by a motherboard of the computing device using a data cable or a data connection device without interface translation, wherein the interface corresponds to a standard of the mass storage device; and accepting a connection of the power port of the mass storage device using a power cable or a power connection device, to a power port on a programmable bus of technology with power management capabilities or facilities, which are controllable by an application program, as a source for power supply and management. 2 Appeal2018-001292 Application 13/568,930 References and Re} ections2 Claims 1-3, 5-7, 9-12, 14--20, and 22 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over the collective teachings of Yu et al. (US 7,393,247 Bl; July 1, 2008) ("Yu") and Kantesaria et al. (US 2006/0167886 Al; July 27, 2006) ("Kantesaria"). Final Act. 2-14. Claims 4, 8, 13, and 21 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over the collective teachings of Yu, Kantesaria, Parry (US 5,574,920; Nov. 12, 1996), and Sakarda et al. (US 6,594,721 Bl; July 15, 2003) ("Sakarda"). Final Act. 14--15. PRINCIPLES OF LAW Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed ['Field Test'] and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved ['Problem Test']. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citations omitted) (emphases added). "Whether a reference in the prior art is 'analogous' is a fact question." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citations omitted). To determine the invention's field of endeavor, we consider the "explanations of the invention's subject matter in the patent application, 2 Throughout this Decision, we refer to (1) the Final Rejection dated Dec. 30, 2016 ("Final Act."); (2) the Appeal Brief dated June 29, 2017 ("App. Br."); (3) the Examiner's Answer dated Sept. 20, 2017 ("Ans."); and (4) the Reply Brief dated Nov. 20, 2017 ("Reply Br."). 3 Appeal2018-001292 Application 13/568,930 including the embodiments, function, and structure of the claimed invention." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted). ANALYSIS 3 Obviousness On this record, the Examiner did not err in rejecting claim 1. Appellant contends Yu does not teach "accepting a connection of the data port to a data bus of an interface provided by a motherboard of the computing device using a data cable or a data connection device without interface translation," as recited in claim 1 ( emphasis added). See App. Br. 5-9; Reply Br. 2-5. As discussed below, Appellant has not persuaded us of error. The Examiner cites Yu's Figure 3 and excerpts from columns 7 and 8 for teaching the italicized limitation. See Final Act. 3; Ans. 16-17. The Examiner maps the claimed "data cable" to Yu's external SATA cable 318. See Final Act. 3; Ans. 16; Yu, Fig. 3. The Examiner finds Yu's external SATA cable 318 connects the adaptor 306, and the connection does not require any interface translation because the adaptor 306 is SAT A compatible. See Final Act. 3; Ans. 16-17; Yu, Fig. 3, 7:53-8: 13. Therefore, the Examiner finds Yu teaches "using a data cable ... without interface translation." See Final Act. 3; Ans. 16-17. Because claim 1 requires using either a data cable or a data connection device, the Examiner finds Yu 3 To the extent Appellant advances new arguments in the Reply Brief without showing good cause, Appellant has waived such arguments. See 37 C.F.R. § 41.41(b)(2). 4 Appeal2018-001292 Application 13/568,930 teaches "using a data cable or a data connection device without interface translation," as required by claim 1. See Final Act. 3; Ans. 16-17. Appellant asserts "the Figure and cited lines of Yu relied upon by the Examiner do not teach, or otherwise suggest" the italicized limitation. App. Br. 6; see also App. Br. 6-8; Reply Br. 2--4. However, Appellant does not analyze the Yu portions cited by the Examiner, and does not persuasively explain why the Examiner's above findings are incorrect. Further, Appellant's assertion that "Yu suggests interface translation" (App. Br. 8; see also Reply Br. 3) is unpersuasive because it is not directed to the Examiner's specific findings. Specifically, Appellant cites Yu's column 10 and contends Yu's device 100 includes an interface circuit (App. Br. 8; Reply Br. 3). However, as discussed above, the Examiner does not cite Yu' s device 100 for teaching the italicized limitation. Likewise, Appellant's argument about Kantesaria (App. Br. 9; Reply Br. 4--5)4 is unpersuasive because it is not directed to the Examiner's specific findings. As discussed above, the Examiner cites Yu-not Kantesaria-for teaching the italicized limitation. Similarly, Appellant's argument about inherency (App. Br. 7-8) is unpersuasive because it is not directed to the Examiner's specific findings. As discussed above, the Examiner does not rely on inherency for the above findings. 4 To the extent Appellant is arguing Kantesaria is not analogous art, Appellant's argument is unpersuasive because it does not persuasively explain why Kantesaria is not analogous art under the Field Test or the Problem test. See Klein, 647 F.3d at 1348. 5 Appeal2018-001292 Application 13/568,930 Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner's rejection of independent claim 1, and independent claims 5, 9, 15, and 22 for similar reasons. We also sustain the Examiner's rejection of corresponding dependent claims 2, 3, 6, 7, 10-12, 14, and 16-20, as Appellant does not advance separate substantive arguments regarding those claims. Regarding dependent claims 4, 8, 13, and 21, Appellant argues the cited references do not collectively teach "logically removing the mass storage device from the computing device," as recited in each of those claims. See App. Br. 1 O; Reply Br. 5---6. In particular, Appellant contends: the Examiner cites to Sakarda, col. 12, 11. 40-49 ... this portion of Sakarda assumes the use of a dock or a bay and a bridge, involving an intermediate layer of device the operation of which is technically distinct from connecting a data port to the data bus of a motherboard without interface translation. Accordingly, Appellant respectfully submits that one skilled in the art would not seek to combine the cited portion of Sakarda with Yu as the systems involve distinct hardware and would not, and could not, be combined to perform the methods of Appellant's claims. Reply Br. 5---6; see also App. Br. 10. Appellant's arguments are unpersuasive because they are not directed to the Examiner's specific findings. As discussed above, the Examiner cites Yu for teaching the limitation "without interface translation," and Sakarda does not need to separately teach that limitation. To the extent Appellant is arguing Sakarda is not analogous art, Appellant's argument is unpersuasive because it focuses on a small portion 6 Appeal2018-001292 Application 13/568,930 of Sakarda, and does not persuasively explain why Sakarda is not analogous art under the Field Test or the Problem test. See Klein, 647 F.3d at 1348. Therefore, and for similar reasons discussed above with respect to claim 1, we sustain the Examiner's rejection of dependent claims 4, 8, 13, and 21. DECISION We affirm the Examiner's decision rejecting claims 1-22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(±). AFFIRMED 7 Copy with citationCopy as parenthetical citation