Ex Parte Eakin

Board of Patent Appeals and Interferences

Oct 21, 2008

10685366 (B.P.A.I. Oct. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER D. HUNT, PABLO SALAZAR
and VALIUDDIN ALI
____________

Appeal 2008-4807
Application 10/214,668
Technology Center 2100
____________

Decided: October 21, 2008
____________

Before JAMESON LEE, RICHARD TORCZON and SALLY C. MEDLEY,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the Case
Hewlett Packard Development Company, L.P. (“HP”), the real party in
interest, seeks review under 35 U.S.C. § 134(a) of a Final Rejection of
claims 1-20 and 29, the only claims remaining in the application on appeal.

Appeal 2008-4807
Application 10/214,668

We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new
ground of rejection.
HP’s invention is related to a personal computing device that provides
rapid access to stored information through a browser while the personal
computing device is powered off, hibernating or sleeping. Spec. 2, Abs., 6-
10.
Representative claim 1, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows:
A system for providing rapid access to data, comprising:
a software component that is adapted to execute on a host system
and to collect user data when an application program is executing
on the host system and store the user data in a storage device; and
a browser that is adapted to read the user data stored in the storage
device while the host system is in an off state.

The Examiner relies on the following prior art in rejecting the claims on
appeal:
Yamazaki 6,895,515 May 17, 2005

Ben-Shachar et al. (“Ben-Shachar”) 6,208,996 March 27, 2001

The Examiner rejected claims 1-20 and 29 under 35 U.S.C. § 103(a) as
unpatentable over Ben-Shachar and Yamazaki.
B. Issue
The issue is whether HP has shown that the Examiner erred in
determining that the combination of Ben-Shachar and Yamazaki describe a
browser that is adapted to read stored user data while a host system is in an
off state.
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C. Findings of Fact (“FF”)
Yamazaki
1. Yamazaki describes a PC 12 that includes a main memory 16, a liquid
crystal display (LCD) 28, a docking station network adapter 84 and a
Peripheral Component Interconnect (PCI) slot network adapter 42. Col.
5, l. 1-col. 6, l. 28; figs. 1, 4.
2. A Wake ON LAN (Local Area Network) (WOL) function enables a
network administrator of the LAN, connected to PC 12 through network
adapters 42, 84, to remotely turn on the PC 12 through the LAN. Col. 6,
ll. 29-34, col. 9, ll. 25-55.
3. The WOL function is enabled and disabled by writing the setting
information to the internal registers of the network adapters 42, 84. Col.
6, ll. 34-40; col. 13, ll. 39-43.
4. Yamazaki describes a USB port connected to a USB connector 50
provided on PC 12. Col. 7, ll. 7-10.
5. “[T]he USB supports a function of attaching and removing a new
peripheral device (USB device) while the power is on (hot plugging
function), and a function of automatically recognizing a newly
connected peripheral device and resetting the system configuration
(plug-and-play function).” Col. 7, ll. 10-15.
Definition
6. A browser is defined as a program that accesses and displays files and
other data available on the Internet and other networks. THE AM.
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2004).
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DiVincenzo et al. (“DiVincenzo”)
7. DiVincenzo describes a software program stored on and executed on
digital camera 60. Col. 3, ll. 6-16; fig. 1-2.
8. The software program collects images and data from a card reader 30
when the application program is executing on the digital camera 60.
Col. 3, ll. 6-16; figs.1-2.
9. The software program stores the images and data on memory card 80a.
Col. 3, ll. 6-16; figs.1-2.
10. ADOBE® PHOTOSHOP® software operating on image acquisition
station 90 reads images and data from the memory card 80b to permit
image processing. Col. 3, ll. 26-35; fig. 1.
Matsuo
11. Matsuo describes a camera 2 that is equipped with a memory card
ejector that includes a memory card detecting switch 18. Col. 3,
l. 64-col. 4, l. 8; col. 4, ll. 53-59; fig. 2.
12. When the memory card detector switch 18 is in an ON state, power is
not supplied to the camera so that it cannot take a picture. Col. 4, ll. 53-
59; col. 7, ll. 17-20; col. 7, ll. 55-col. 8, l. 5.
13. Unnecessary consumption of power can be prevented when the memory
card is not loaded and taking a picture is impossible. Col. 4, ll. 60-63.
D. Principles of Law
“In the patentability context, claims are to be given their broadest
reasonable interpretations.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citation omitted).
“[T]he examiner bears the initial [examination] burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
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unpatentability. If that burden is met, the burden of coming forward with
evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
E. Analysis
Rejection of Claims 1-20 and 29
Representative claim 1 recites “a browser that is adapted to read the user
data stored in the storage device while the computer system is in an off
state.” App. Br. 15.
HP argues that Yamazaki relates to remotely providing power to a PC
through a local area network (LAN) which is not equivalent to accessing
data while a host system is in an off state. App. Br. 11. We do not agree
with HP’s characterization of Yamazaki because Yamazaki does not
describe providing power to a PC through a LAN. Instead, Yamazaki
describes remotely turning on the power of the PC through a LAN when a
Wake On LAN (WOL) function is enabled. FF1s 1-2. Nonetheless, we
agree with HP’s arguments that Yamazaki does not describe reading user
data while the host system is in the off state.
The Examiner finds that Yamazaki describes a browser (liquid crystal
display (LCD) 28) that is configured to read user data from a storage device
(writable main memory 16), while PC 12 is in an off state. Final Rejection
9, Ans. 11; citing Yamazaki col. 5, l. 40-col.6, l. 6; col. 6, ll. 29-40; col. 8, ll.
28-50. The Examiner finds that the user data is read during use of the WOL
technique and when a plug-and-play function is utilized. Final Rejection 9,
Ans. 11; citing Yamazaki col. 6, ll. 29-40; col. 7, lines 7-18; col. 8, ll. 28-50.

1 FF denotes Finding of Fact.

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The Examiner has not directed us to, and we cannot find, where
Yamazaki describes that writable main memory 16 is read by LCD 28 while
PC 12 is in an off state when using the WOL technique. Yamazaki describes
a WOL function which, when enabled, allows the administrator of a LAN
connected to the PC 12 through network adapters 42, 84, to remotely turn on
the power of the PC 12. FFs 1-2. We do not agree that sending a signal to
turn on a PC meets the limitation of reading user data stored in the PC (i.e.,
main memory 16 of PC 12). To the extent that the Examiner is relying on
the WOL enablement setting information as the data that is read from the PC
while it is in the off state, the Examiner has not explained how such data is
read from the main memory as alleged. Yamazaki does not describe that the
WOL setting information is stored in the main memory 16 of PC 12.
Instead, Yamazaki describes that the WOL setting information is stored in
the internal registers of the network adapters 42, 84. FF 3.
The Examiner also has not directed us to, and we cannot find, where
Yamazaki describes that writable main memory 16 is read by LCD 28 while
PC 12 is in an off state when utilizing a plug and play function. Yamazaki
describes that PC 12 has a universal serial bus (USB) port and connector
which supports attaching and removing a new peripheral device while the
power is on (hot plugging function) and automatically recognizing a newly
connected peripheral device and resetting the system configuration (plug-
and-play function). FFs 4-5. The Examiner has not explained how
Yamazaki’s plug and play function enables user data to be read while the PC
is in an off state. In fact, Yamazaki, describes the exact opposite because it
describes supporting “a function of attaching and removing a new peripheral
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device (USB device) while the power is on (hot plugging function) . . . .”
FF 5.
Additionally, Yamazaki does not describe that LCD 28 is a browser.
Consistent with the dictionary definition, we broadly construe a browser as a
program that accesses and displays files and other data. FF 6. Yamazaki
merely describes a liquid crystal display (LCD) 28. FF 1.
For all these reasons, we find that the Examiner erred in determining that
claims 1-20 and 29 are obvious over Ben-Shachar and Yamazaki.
New Ground of Rejection
The following is a quotation of 35 U.S.C. § 103(a) which forms the basis
for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of this
title, if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter
pertains. Patentability shall not be negatived by the manner in which
the invention was made.

Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
DiVincenzo et al. (5,965,859) and Matsuo (5,179,505).
DiVincenzo describes a software component that is adapted to execute on
a host system (i.e., digital camera 60) and to collect user data (i.e., images
and data from card reader 30) when the application program is executing on
the host system. FFs 7-8. The software component is also adapted to store
the user data (images and data) in a storage device (i.e., memory card 80b).
FF 9. DiVincenzo further describes a browser (i.e., ADOBE®
PHOTOSHOP® software operating on image acquisition station 90) that is
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adapted to read the user data (images and data) stored on the storage device
(i.e., memory card 80b). FF 10.
DiVincenzo does not explicitly describe that the digital camera 60 is in an
off state while the ADOBE® PHOTOSHOP® software reads the images and
data from the memory card 80b previously unloaded from the camera.
Matsuo describes a camera that is powered off when a memory card is not
loaded in the camera. FFs 11-12. Matsuo describes that unnecessary
consumption of power can be prevented when the memory card is not loaded
and taking a picture is impossible. FF 13.
It would have been obvious to one with ordinary skill in the art at the time
the invention was made to modify DiVincenzo’s camera to be in the off state
when the memory card is not loaded in the camera and while the images and
data are read from the memory card by a device other than the camera itself
in order to prevent unnecessary power consumption by the camera.
F. Decision
Upon consideration of the appeal, and for the reasons given herein, it is
ORDERED that the decision of the Examiner rejecting claims 1-20
and 29 as unpatentable under 35 U.S.C. § 103(a) over Ben-Shachar and
Yamzaki is reversed.
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED
New Ground of Rejection - 37 C.F.R. § 41.50(b)

rvb

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