Ex Parte Cheng

Board of Patent Appeals and Interferences

May 24, 2010

09803173 (B.P.A.I. May. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHONG SENG CHENG
____________

Appeal 2008-006002
Application 09/803,173
Technology Center 2100
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Decided: May 24, 2010
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Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
JAY P. LUCAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant’s Request for Rehearing (filed Jan. 20, 2010) contends that
we erred in our Decision on Appeal entered November 20, 2009
(“Decision”), in which we affirmed the Examiner’s decision to reject claims
22-30.

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DISCUSSION
Appellant does not request that we reconsider our finding that the
Specification provides written description (35 U.S.C. § 112, first para.)
support for the claim 22 recitation of “a non-volatile solid-state memory . . .
having sufficient capacity to enable the unitary portable storage device to
serve as an alternative to a magnetic disk or CD.” Rather, Appellant submits
that we misapprehended the above-quoted limitation when comparing claim
22 to the applied prior art but not when finding the limitation to be supported
by the Specification.
For the reasons set forth at pages 7 and 8 of the Decision, we
concluded that, in light of the Specification, the “sufficient capacity”
recitation did not require some minimum but undefined amount of memory
as alleged by Appellant.
Appellant’s Request places a number (or numbers) on the size of
memory that should be considered “sufficient capacity.” In particular,
Appellant now alleges, without citation to anything in the record, that at the
time of invention it was known in the art that some unidentified (“a”)
magnetic disk or CD had at least about a megabyte of “capacity.” Appellant
somehow concludes that the allegation places a “lower limit,” in the
“claimed invention,” of an amount that is 440 bytes greater than one
thousand bytes (i.e., 1.44 megabytes). Req. Reh’g 6.1 Further, Appellant

1 Appellant in the Request does not rely on the declaration evidence that we
considered in the Decision. In any event, since it was Appellant’s burden to
show that the Examiner erred in rejecting the claims, we considered the
declarations only to the extent that the evidence was relied upon in the
briefs.
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fails to point out where the disclosure states or otherwise indicates that the
invention was “designed to replace” the 1.44 MB floppy disk. See id., n.2.
Even if we were to postulate that, however unlikely, all magnetic
disks and all CD’s known to one of ordinary skill in the art at the time of
invention contained at least one (or 1.44) megabytes of memory, there has
been no showing that claim 22 requires the unproven minimum amount of
memory that all existing magnetic disks or existing CD’s contained. In light
of the Specification, the “sufficient capacity” of claim 22 does not require
that the memory capacity of the data storage device equal or nearly equal
one (or 1.44) megabyte.
Appellant also points to teachings in the Specification in which the
flash memory in the data storage device may store software for installation
on a computer, and submits that “most, if not all” of such software
comprised more than one byte or one bit of data. Id. at 7. We did not,
however, overlook or misapprehend the teachings of the Specification, but
simply declined to read particular disclosed embodiments into the claims.
Moreover, claim 22 could be read as covering a portable data storage device
“capable of storing software for installation to the computer,” as recited in
the preamble, but is not limited to a device capable of “storing software.”
The claim preamble contains the alternative recitation of being capable of
“receiving and storing user’s data present in the computer.”
Appellant has yet to point out where the word “capacity” may be
defined, discussed, or even make an appearance in the Specification.
“Capacity” may be defined as the maximum amount that can be contained.
See The American Heritage Dictionary, Second College Ed. (1982) at 236
(“2. The maximum amount that can be contained: a trunk filled to
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capacity.”). “Capacity,” however, can also be defined as “[t]he ability to
receive, hold, or absorb.” Id., def’n 1.a. Because the Specification did not
define or indicate some required minimum amount of memory capacity to
enable the portable data storage device to serve as “an alternative to a
magnetic disk or CD,” we are not persuaded that the broadest reasonable
interpretation of “sufficient capacity” as used in claim 22 is limited to mean
an amount of memory equal to or greater than 1.44 (or one) megabytes. As
we further indicated in the Decision, even if “sufficient capacity” were
limited to “sufficient memory capacity” -- size or amount of memory -- there
was insufficient evidence that the amount was limited to something more
than one or a few bytes (i.e., capable of serving as a portable repository for
data), or at the extreme required more memory information content than that
which can be provided by a single bit.
Appellant’s Request also reargues the applied references, and in
particular Gilbert, since Gilbert discloses a memory “capacity” even under
Appellant’s unduly restrictive reading of “sufficient capacity.” Appellant
submits that we “misapprehended the disclosure of the Gilbert reference”
because the contents of the memory cannot be modified. Req. Reh’g 2.
However, as we indicated in the Decision (at 9), Gilbert discloses that
the PDAC (card) can include non-volatile solid-state memory that contains
software applications and user data. We did not misapprehend the
disclosure of the Gilbert reference. Appellant’s arguments based on the
PDAC containing only non-alterable EPROM are not persuasive. Moreover,
even within a Gilbert paragraph to which Appellant refers (col. 3, ll. 37-53),
the reference describes multiple embodiments of alterable non-volatile
solid-state memory for storing software applications in addition to the
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“preferred” EPROM embodiment. Finally, we observe that Appellant is
reading yet more unfounded limitations into claim 22. Claim 22 does not
distinguish over “non-alterable EPROM,” since the claim as broadly drafted
reads on write-once non-volatile solid-state memory such as EPROM, which
serves as an alternative to non-alterable compact discs.
We have reconsidered our interpretation of the disputed language of
claim 22 in light of Appellant’s remarks in the Request. We have not
considered Appellant’s new arguments (or re-arguments) concerning the
references in the Request because Appellant does not point out where the
arguments were presented in the briefs. The purpose of a Request for
Rehearing is to bring to our attention what we might have misapprehended
or overlooked in making our determinations (see 37 C.F.R. § 41.52(a)(1)),
not for presenting arguments that could have been made in the briefs or re-
arguing those that were made.
Appellant does, however, respond to our findings in the Decision (at
16) that the plug device described by Margalit can store confidential medical
information, and thus Margalit discloses or at the least suggests a memory
“capacity” within Appellant’s argued meaning of the term. Appellant argues
that Margalit does not “disclose” that the confidential medical information is
stored in a “non-volatile solid state memory” in the plug device. Req. Reh’g
15-16. Appellant neglects, however, to allege where the persistent
confidential medical information may be stored in the plug device if not in
“non-volatile solid state memory.” Moreover, as made clear in the
Examiner’s rejection and in the Decision, claim 29 was rejected for
obviousness under 35 U.S.C. § 103(a), rather than for anticipation under
§ 102. Even if Margalit were deemed to not describe (e.g., by express
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terms) the storage of confidential medical information in non-volatile solid
state memory, Appellant’s argument is not persuasive in the context of the
rejection of claim 29 under § 103(a) over Margalit and Jha.

DECISION
In summary, we have granted Appellant’s request for rehearing to the
extent that we have reconsidered our decision affirming the rejection of
claims 22-30, but we decline to modify the decision in any way.

DENIED

msc

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