Ex Parte Feinberg et al

Patent Trial and Appeal Board

Mar 31, 2016

13220557 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/220,557 08/29/2011
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
04/04/2016
FIRST NAMED INVENTOR
Eugene Feinberg
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.
7637-0001-DC 2030
EXAMINER
FRANKLIN, RICHARD B
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
patents@ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE FEINBERG, YUV AL KOREN, BEREND OZCERI,
and ZIV GILLAT
Appeal2014-003725
Application 13/220,557 1
Technology Center 2100
Before MARC S. HOFF, BRETT C. MARTIN, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Eye-Fi, Inc. (App. Br.
3).
Appeal2014-003725
Application 13/220,557
STATEMENT OF THE CASE
Appellants' claimed subject matter relates to storage media for digital
media devices and transferring digital media stored therein via wireless
communication. See, generally, Spec ,-r 2.
Claim 1 is illustrative:
1. A digital media storage device, comprising:
a housing sized to be accommodated within a host and
configured so as to allow the digital media storage device to be
removable from the host;
host;
a host interface for receiving digital information from the
included within the housing:
a wireless communication interface;
a controller coupled to the host interface and to the
wireless communication interface; and
a memory system, said memory system including:
a first memory coupled to the controller for
storing the digital information received from the
host; and
a second memory coupled to the controller,
said second memory storing a wireless network
configuration utility for the wireless
communication interface, said configuration utility
including controller-executable instructions for
causing said controller to store configuration
information for the wireless communication
interface to associate with a wireless network and
said memory system further stores computer-
executable instructions for said controller to instruct
the host to provide an indication of a status of a
transfer of the digital information over the wireless
network using a host-based user interface.
2
Appeal2014-003725
Application 13/220,557
THE REJECTIONS2
The Examiner rejected claims 1 and 4--14 under 35 U.S.C. § 103(a) as
unpatentable over Marshall (U.S. 2004/0196375 Al; Oct. 7, 2004), Spencer
(U.S. 6,862,604 Bl; Mar. 1, 2005), and Edwards (U.S. 2001/0045985 Al)
(Final Act. 3-8), and rejected claims 2 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Marshall (U.S. 2004/0196375 Al; Oct. 7, 2004), Spencer
(U.S. 6,862,604 Bl; Mar. 1, 2005), and Liu (U.S. 2006/0010325 Al; Jan.
12, 2006) (Final Act. 8-9).
THE OBVIOUSNESS REJECTION OVER MARSHALL, SPENCER,
AND EDWARDS
Contentions
The Examiner finds that Marshall teaches or suggests the limitations
of claim 1, except that Marshall does not teach or suggest the second
memory and various aspects thereof, in particular the "instructions for said
controller to instruct the host to provide an indication of a status of a transfer
of the digital information over the wireless network using a host-based user
interface." Final Act. 4--5. For the missing elements, the Examiner cites
Spencer and/or Edwards. Id. 5-7. In particular, the Examiner cites Edwards
for the instructions regarding transfer status. Id. 6-7 (citing Edwards i-f 58).
In other words, the Examiner finds that Marshall's storage card could be
2 Throughout this opinion, we refer to (1) Final Action mailed March 6,
2013 ("Final Act."); (2) the Appeal Brief filed October 7, 2013 ("App. Br.");
(3) the Examiner's Answer mailed December 18, 2013 ("Ans."); and (4) the
Reply Brief filed January 31, 2014 ("Reply Br.").
3
Appeal2014-003725
Application 13/220,557
modified in view of Edwards' storage transfer status teachings so that
transfer status information could be displayed on a host device in which
Marshall's storage medium is used. Id. 5-7.
Appellants do not dispute that the cited references teach or suggest all
claim elements. Instead, Appellants argue that modifying Marshall as
suggested by the Examiner would change Marshall's principle of operation.
App. Br. 8-9; Reply Br. 5-7. Appellants argue that Marshall has a stated
advantage that Marshall's storage card, which has a wireless interface
operable thereon, looks like any other storage card to the host device.
Appellants assert that modifying Marshall to instruct the host to provide a
storage transfer status indication would defeat that advantage. Id.
Appellants do not otherwise argue the rejections of claims 1 and 4--14.
Appellants argue the Examiner's rejection of claims 2 and 3 only on the
basis that Liu does not sure the deficiencies as to the other rejection. App.
Br. 10.
Analysis
We are unpersuaded of error. We agree with the Examiner that "the
teachings of Edwards is (sic) an improvement to the system of Marshall and
is not a change in the principle of operation of Marshall." Ans. 3. We
recognize that Marshall states that one advantage of having the wireless
functionality on the storage card is that it allows the camera or other host
device to be concerned only with "writing images to the card." Marshall i-f
13. But we are not persuaded that this advantage amounts to a "principle of
operation" such that adding to the storage card the ability to instruct the host
device of the transfer status would change a principle of operation, thereby
4
Appeal2014-003725
Application 13/220,557
resulting in an unobvious combination. The wireless functionality in the
Examiner's proposed combination remains on the storage card and the host
device remains able to write to the card. Adding to the wireless-enabled
storage card instructions to instruct the host regarding transfer status is an
additional feature, not a principle of operation change.
Accordingly, we sustain the Examiner's rejection of claims 1 and 4--
14. We also sustain the Examiner's rejection of claims 2 and 3 based on this
record.
DECISION
The Examiner's decision rejecting claims 1-14 is affirmed.
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).
AFFIRMED
5