Ex Parte Frank et al

Patent Trial and Appeal Board

Apr 1, 2015

11302313 (P.T.A.B. Apr. 1, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVIS W. FRANK, EZEKIEL SANBORN DE ASIS,
RAJAN RANGA, and MARK EASTWOOD
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Appeal 2012-011182
Application 11/302,313
Technology Center 2100
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Before ELENI MANTIS MERCADER, BRUCE R. WINSOR, and
GARTH D. BAER, Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–26. App. Br. 5. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

BACKGROUND
A. The Invention
Appellants’ invention is directed to “the persistent maintenance of
customization data on computing devices.” Spec. ¶ 1. Independent claim 1
is illustrative and is reproduced below:
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1. A component for a computing device, the component
comprising:
a persistent memory configured to store, in a hard-reset
state, data corresponding to an operating system, and
customization data;
a first logic that delineates a first region of the persistent
memory where the operating system is stored from a second
region in the memory where the customization data is stored, so
that the customization data is retrievable from the second region
without retrieving data from the first region; and
a second logic that is configured to reserve a location of
the second region where the customization data is stored to
preserve the customization data during a formatting of the
second region when the computing device is initialized from the
hard-reset state, wherein the location is based on a size of the
customization data.

B. The Rejections on Appeal
The Examiner rejected claims 1–6, 9–14, and 18–25 under 35 U.S.C.
§ 102(b) as anticipated by Moller (WO 02/25976 A1, pub. Mar. 28, 2002).
Final Action 3.
The Examiner rejected claims 7, 8, 15 and 17 under 35 U.S.C.
§ 103(a) as obvious over Moller and Choi (US 2004/0017708 A1, pub. Jan.
29, 2004). Final Action 15.
The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as obvious
over Moller and Koizumi (US 2006/0212694 A1, pub. Sept. 21, 2006).
Final Action 18.
The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as obvious
over Moller and Calligaro (US 7,017,004 B1, iss. Mar. 21, 2006). Final
Action 19.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. Except as noted below, we adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 2–20) and (2) the reasons and
conclusions set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (Ans. 5–10).
A. Claims 1, 2, 4–10, 12, 13, 15–26
Appellants contest the Examiner’s finding that Moller anticipates
claim 1 because, according to Appellants, Moller “fails to teach a second
logic that is configured to reserve a location of the second region where the
customization data is stored to preserve the customization data during a
formatting of the second region when the computing device is initialized
from the hard-reset state,” as the claim requires. App. Br. 7. Appellants
further argue “Moller also fails to disclose that the location of the second
region (i.e., the reserved location) is based on a size of the customization
data,” as claim 1 also requires. Id.
We are not persuaded the Examiner erred. The Examiner makes a
facially-valid rejection, outlining relevant claim constructions and detailing
where Moller discloses each relevant element from claim 1. Final Action 3–
5; Ans. 6–7. Appellants’ response is unpersuasive because it merely
reproduces various portions of Moller’s disclosure and the disputed claim
limitations (with added emphasis), and makes general allegations that the
reproduced portions of Moller fail to teach the claim limitations. See App.
Br. 7; Reply Br. 4–6. Appellants do not, however, offer a meaningful
explanation why the disclosure is inadequate. Merely reciting the language
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of the claims and asserting that the prior art reference does not teach each
claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). On this
record, we are not persuaded the Examiner erred in rejecting claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 1. Because
Appellants rely on the same arguments in contesting claims 2, 4–10, 12, 13,
and 15–26 (see App. Br. 6–9), we also sustain the Examiner’s rejection of
those claims for the same reasons.
B. Claim 3
Appellants contest the Examiner’s finding that Moller anticipates
claim 3, asserting Moller “fails to disclose that the customization data is
class-specific for the computing device,” as the claim requires. App. Br. 9.
In response, the Examiner finds Moller discloses class-specific
customization data in teaching “dedicating a group of blocks to a particular
type of data” such as Abbreviated Dialing Numbers, Fixed Dialing
Numbers, Short Message Service, or various user applications. Ans. 8.
Once again, we are not persuaded the Examiner erred because the Examiner
has made a facially-valid rejection, and Appellants’ argument in response is
limited to reproducing portions of Moller’s disclosure and the disputed
claim, along with general allegations that the former fails to teach the latter.
We therefore sustain the Examiner’s rejection of claim 3.
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C. Claim 11
Appellants contest the Examiner’s finding that Moller anticipates
claim 11, asserting that Moller fails to teach “a token that identifies a value
that indicates a size of the customization data,” as claim 11 requires. App.
Br. 10. As the Examiner explains, however, Moller teaches providing “[t]he
exact amount or the percentage of the capacity a service provider is allowed
to allocate or reserve on the SIM module.” Moller 5:19–20; see App. Br. 10;
Final Action 11. Although Appellants characterize Moller’s disclosure as
addressing “the amount of memory reserved for the user compared to for
the service provider,” Appellants have not offered a persuasive explanation
why the amount of reserved memory fails to meet the claimed “size of the
customization data.” Therefore, on this record, we are not persuaded the
Examiner erred in rejecting claim 11. We sustain the Examiner’s rejection
of claim 11.
D. Claim 14
Claim 14 requires that “the customization data is provided at a logical
end of the first persistent memory, so that the value stored identifies the
location of the customization data in the first persistent memory.” In
response to Appellants’ assertion that Moller fails to disclose the limitations
of claim 14, the Examiner explains that the reference addresses allocating
customization data at the logical end of the first persistent memory. See
Ans. 9–10 (explaining that “the physical update of the second area is not
fragmented, meaning that the second area starts from an area which is
contiguous and distinct from the first area”). The Examiner does not,
however, adequately address the second part of the limitation—identifying
the location of the customization data—and it is not facially apparent how
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Moller’s disclosure would do so. We therefore agree with Appellants that
the Examiner erred in rejecting claim 14 and, accordingly, do not sustain the
Examiner’s rejection of claim 14.
DECISION
We affirm the Examiner’s rejections of claims 1–13 and 15–26.
We reverse the Examiner’s rejection of claim 14.
The Examiner’s decision to reject claims 1–26 is AFFIRMED-IN-
PART.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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