Ex Parte Combs et al

Board of Patent Appeals and Interferences

Jun 30, 2009

11095109 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES LEE COMBS, GARY LEE NOE,
and WILLIAM HENRY REED
____________

Appeal 2009-002160
Application 11/095,109
Technology Center 2800
____________

Decided:1 June 30, 2009
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002160
Application 11/095,109

decision rejecting claims 1-13 and 15-20.2 We have jurisdiction under 35
U.S.C. § 6.
We REVERSE.
Statement of the Case
Appellants’ invention addresses a problem associated with prior art
multi-format memory card drives which include a single multi-format
memory card slot to receive different types of removable memory cards
(Spec. para. bridging 1-2; Figs. 1-2). The problem disclosed by Appellants
is that “it is possible for a user to damage the mechanical and/or electrical
features of the card and/or the memory card drive if the card is improperly
inserted into [the] multi-format memory card drive” (Spec. 2, ll. 10-12).
According to Appellants, their invention solves this problem by providing “a
device that permits a user to customize the card slot opening of the multi-
format memory card drive to correspond to a particular type of memory card
that is used by the user” (id. at ll. 15-17). This device comprises “[a] bezel
[which] is configured for installation over the multi-format memory card slot
. . . [and which] is configured to select a subset of the plurality of memory
card formats that can be received by the multi-format memory card slot of
the multi-format memory card drive.” (Id. at ll. 23-26; Figs. 3 (No. 54), 5-8
(Nos. 54-1 through 54-4)).
The appealed claims define Appellants’ invention as:
(i) an apparatus comprising the above-described multi-format memory
card drive and a first bezel configured for installation over the multi-format

2 Claim 14, which is the only other claim pending in this application, stands
objected to as being dependent upon a rejected base claim but otherwise
allowable (Final Office Action, issued Apr. 02, 2007, 6; Br., filed Oct. 02,
2007, 5).
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memory card slot and configured to select a subset of the plurality of
memory card formats that can be received by the multi-format memory card
slot (claim 1); (ii) a method to customize a multi-format memory card drive
which comprises selecting and installing a bezel having a bezel slot
corresponding to a width and a height of the memory card which is to be
inserted into the multi-format memory card slot (claim 12); and (iii) a kit for
use with an apparatus having a multi-format memory card slot which
comprises a plurality of bezels configured for installation over the slot and
configured to accommodate a particular memory card format that is to be
inserted into the slot (claim 15).
Representative independent claims 1, 12, and 15 read as follows:
1. An apparatus, comprising:

a multi-format memory card drive having a multi-format memory card
slot configured to receive any one of a plurality of memory cards having a
corresponding plurality of memory card formats, at least one of said
plurality of memory cards having a memory card format that is different
from another memory card format of said plurality of memory card formats;
and

a first bezel configured for installation over said multi-format memory
card slot, said first bezel being configured to select a subset of said plurality
of memory card formats that can be received by said multi-format memory
card slot of said multi-format memory card drive.

12. A method to customize a multi-format memory card drive
installed in an apparatus [comprising]:

determining a type of memory card desired to be inserted in a multi-
format memory card slot of said multi-format memory card drive;

selecting a bezel having a bezel slot corresponding to a width and a
height of said memory card; and
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installing said bezel over said multi-format memory card slot.

15. A kit for use with an apparatus having a multi-format memory
card slot configured to receive a plurality of memory cards having a
corresponding plurality of memory card formats, at least one of said
plurality of memory cards having a memory card format that is different
from another memory card format of said plurality of memory card formats,
comprising a plurality of bezels configured for installation over said multi-
format memory card slot, each bezel of said plurality of bezels being
configured to accommodate a particular memory card format of said
plurality of memory card formats to select said particular memory card
format of a memory card that is to be inserted into said multi-format
memory card slot.

The prior art set forth below is relied upon by the Examiner as
evidence of obviousness:
Condra 5,199,888 Apr. 06, 1993
Nishimura 2001/0039129 Nov. 08, 2001
Sato 6,645,000 B2 Nov. 11, 2003
The Examiner rejects claim 1-9, 12, 13, 15, 16, and 18-20 (which
includes all of the independent claims on appeal) under 35 U.S.C. § 103(a)
as being unpatentable over Nishimura in view of Condra and
correspondingly rejects claims 10, 11, and 17 as being unpatentable over
these references and further in view of Sato.
The Examiner’s fundamental obviousness position is as follows:
Nishimura discloses substantially the claimed invention
except for the bezel. Condra teaches a first bezel (24)
configured for installation over a multi-format connector slot,
the first bezel being configured to select a subset of the
plurality of connectors [sic] formats that can be received by
the multi-format connector slot of the multi-format connector
drive in order to reduce the amount of foreign matter in the
connectors (see Abstract). It would have been obvious to
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one of ordinary skill in the art at the time the invention was
made [to have] provided the multi-format memory card drive
of Nishimura with a bezel, as taught by Condra, to reduce the
amount of foreign matter in the connectors.

(Ans. 3).
Issue
Have Appellants shown error in the Examiner’s conclusion that it
would have been obvious to combine Nishimura and Condra in such a
manner as to result in the first bezel feature required by apparatus claim 1,
the bezel selecting and installing steps required by method claim 12, and the
plurality of bezels required by kit claim 15?
Findings of Fact
In support of the above-quoted findings regarding Condra, the
Examiner cites to Condra’s teachings at the abstract (Ans. 3) and at lines 24-
28 in column 4 (Ans. 5) which read as follows:
An improved cover assembly for the electrical
connectors of a notebook computer. The notebook computer
of the present invention is adapted to be connected by
electrical connectors with an expansion base. The improved
cover assembly includes a cover plate hinged to the housing
of the notebook computer movable relative to the housing
between an uncovered position and a retained position. The
cover plate includes a slidable door being sized so as to allow
connection of a preselected connector of the notebook
computer. The improved cover assembly can be adapted to
allow the notebook computer to be connected to the
expansion base while the remaining notebook computer
electrical connectors are covered to reduce the amount of
undesirable foreign matter in the open ended connectors that
can reduce connection performance.

(Condra, abstract).
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The cover assembly 20 includes a cover plate 24 having
an opening 26. The opening 26 is sized to allow access to a
preselected connector, preferably an expansion base
connector 22 but alternatively a parallel or printer connector,
as best seen in FIG. 8. A door 28 is sized to cover the cover
plate opening 26, particularly when the plate is in the
retained position. The door 28 is slidable relative to the plate
opening 26 between a closed position, as best seen in FIG. 7,
and an open position, as best seen in FIG. 8, to allow access
to the expansion base connector 22 or any other preselected
connector to provide electrical connection to the notebook
computer. The door 28 includes a handle 28A to facilitate
opening of the door.

(Condra, col. 4, ll. 24-28).
These teachings relate to a cover assembly for the connectors of a
notebook computer as depicted in Figures 7, 8, and 9 of Condra which are
reproduced below:
Figure 7 is reproduced below:

Figure 7 shows a rear view of a notebook computer having mounted
thereon a cover plate 24 shown in the closed position including a sliding
door 28 also shown in the closed position.
Figure 8 is reproduced below:
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Figure 8 shows the depiction of Figure 7 except with sliding door 28
in the open position to allow access to expansion base connector 22.
Figure 9 is reproduced below:

Figure 9 shows the depiction of Figure 8 except with cover plate 24 in
the uncovered position.
Principles of Law
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
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with some rational underpinning to support the legal conclusion of
obviousness”. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with
approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417-18 (2007).
Analysis
With respect to claim 1, Appellants argue that, in Condra, “the cover
plate 24, opening 26 and/or door 28 never selects a subset [i.e., is not
configured to select a subset] of a plurality of cables that can be received by
a particular connector, so as to be somewhat analogous to Appellant’s [sic]
claim language” (Br. 15). For this reason, it is Appellants’ position that
Nishimura and Condra, whether considered alone or in combination, would
not have suggested the claim 1 feature “a first bezel configured for
installation over said multi-format memory card slot, said first bezel being
configured to select a subset of said plurality of memory card formats that
can be received by said multi-format memory card slot of said multi-format
memory card drive” (claim 1) (Br. para. bridging 15-16).
We agree with Appellants.
As previously indicated, the Examiner concludes that “[i]t would have
obvious to one of ordinary skill in the art at the time the invention was made
[to have] provided the multi-format memory card of Nishimura with a bezel,
as taught by Condra, to reduce the amount of foreign matter in the
connectors” (Ans. 3). Absent from this statement is a reasonably specific
explanation of how and why Nishimura’s multi-format memory card drive
would have been combined with the bezel or cover plate 24 of Condra in
such a manner as to yield an apparatus having the first bezel feature required
by claim 1. In this regard, we emphasize that a combination of Nishimura
and Condra would not necessarily yield the claim 1 apparatus.
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For example, the Examiner states that it would have been obvious to
provide “the multi-format memory card drive of Nishimura with a bezel, as
taught by Condra, to reduce the amount of foreign matter in the connectors”
(id., emphasis added). However, this reduction of foreign matter would have
been achieved by providing the multi-format memory card drive or card
connector of Nishimura with a cover plate having a sliding door as taught by
Condra which either covers or provides access to both of the lower and
upper slot openings 15, 25 at the same time. Clearly, such an apparatus
would not satisfy the first bezel feature required by claim 1. On this record,
the Examiner has articulated no specific reasoning with rational
underpinning to support a conclusion that it would have been obvious to
combine Nishimura and Condra in such a way as to yield the first bezel
feature of claim 1 whereby only one of Nishimura’s plural slot openings
would be accessible.
Appellants advance the following argument regarding claim
12:
Nowhere does Condra, et al. disclose, teach or suggest
"selecting a bezel having a bezel slot corresponding to a
width and a height of said memory card" and then "installing
said bezel over said multi-format memory card slot", as
recited in claim 12. Thus, even if Condra, et al. was
combined with Nishimura, the combination does not
disclose, teach, or suggest the subject matter of claim 12.

(Br. 24).
This argument is persuasive.
Contrary to the Examiner’s belief, Condra contains no teaching or
suggestion of the bezel selecting and installing steps required by claim 12.
We recognize that Condra’s cover plate 24 has a sliding door 28 for opening
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26 which corresponds to the width and height of expansion base connector
22. We also recognize that Condra discloses an alternative embodiment
wherein the sliding door 28 and opening 26 may provide access to a parallel
or printer connector (i.e., see no. 64 in Fig. 9). Nevertheless, the Examiner
again has failed to articulate specific reasoning with rational underpinning to
support a conclusion that these teachings of Condra would have suggested a
method of customizing Nishimura’s multi-format memory card drive via the
bezel selecting and installing steps required by claim 12.
Finally, Appellants argue that the rejection of claim 15 is improper
because the Condra disclosure relied upon the Examiner (i.e., col. 4, ll. 24-
28) “provides no disclosure, teaching or suggestion with respect to ‘a
plurality of bezels configured for installation over said multi-format memory
card slot’, let alone the specifics of the configuration as recited in claim 15”
(Br. 26).
We share the Appellants’ view.
As indicated above, we recognize that Condra discloses cover plate
embodiments wherein a sliding door and opening may be provided for an
expansion base connector or a parallel printer connector. However, we do
not perceive and the Examiner does not explain with specific reasoning why
these alternative embodiments of Condra would have suggested a kit
comprising a plurality of bezels with each bezel being configured to
accommodate a particular memory card format as required by claim 15.
Conclusions of Law
Appellants have shown error in the Examiner’s conclusion that it
would have been obvious to combine Nishimura and Condra in such a
manner as to result in the first bezel feature required by apparatus claim 1,
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the bezel selecting and installing steps required by method claim 12, and the
plurality of bezels required by kit claim 15.
For this reason, we cannot sustain the Examiner’s § 103 rejections of
claims 1-9, 12, 13, 15, 16, and 18-20 over Nishimura and Condra and of
claims 10, 11, and 17 over Nishimura, Condra, and Sato.
Order
The decision of the Examiner is reversed.

REVERSED

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