Ex Parte Hussein et al

Patent Trial and Appeal Board

Dec 18, 2014

12858281 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HAKAM D. HUSSEIN and WENDONG Z. ZHANG
____________

Appeal 2014-008772
Application 12/858,281
Technology Center 2800
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–35. (App. Br. 20–28; Non-
Final Act. 1.)1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We refer to Appellants’ Reissue Specification (“Spec.”) filed August 17,
2010 (claiming benefit of 10/824,866, filed April 15, 2004); Appeal Brief
(“App. Br.”) filed March 27, 2014; and Reply Brief (Reply Br.”) filed
August 11, 2014. We also refer to the Examiner’s Answer (“Ans.”) mailed
June 12, 2014 and Non-Final Office Action (Non-Final Rejection) (“Non-
Final Act.”) mailed October 29, 2013.
Appeal 2014-008772
Application 12/858,281

2

Appellants’ Invention
The invention at issue on appeal concerns device controllers, data
storage devices, and methods for utilizing a memory storage device
including an impedance control circuit with an impedance control output
forcing the impedance OFF during a first time interval controlled by a first
timer which starts timing in response to the device being plugged into an
energy source. (Spec., col. 1, ll. 30–44; Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A controller for a device, the controller comprising:
a connector for plugging the device into a source of
energization and unplugging the device from the source of
energization, wherein the connector comprises:
a first contact for connecting to a first power supply
contact of the source;
a second contact for connecting to a logic output from the
source; and
a third contact for connecting to a second power supply
contact of the source;
an impedance having a current input that couples to the
first contact of the connector, an impedance control input, and a
current output coupling to the device; and
an impedance control circuit comprising:
a first timer;
a logic input coupling to the second contact of the
connector; and
Appeal 2014-008772
Application 12/858,281

3

an impedance control output connected to the impedance
control input, the impedance control output forcing the
impedance OFF during a first time interval controlled by the
first timer which is triggered by, and starts timing in response
to, the device being plugged into the source of energization, and
the logic output from the source enabling a limited inrush at the
current input during a second time interval controlled by a
second timer.
Rejections on Appeal
1. The Examiner rejects claims 1, 3–7, 9–17, and 19–27 under 35
U.S.C. § 103(a) as being unpatentable over Van Wonterghem (US
5,951,660, issued Sept. 14, 1999) and Priest (US 6,807,039 B2, issued Oct.
19, 2004 (filed, July 8, 2002)).
2. The Examiner rejects claims 1, 3–7, 9–17, and 19–27 under 35
U.S.C. § 103(a) as being unpatentable over Van Wonterghem and Dodson
(US 6,703,889 B2, issued Mar. 9, 2004).
3. The Examiner rejects claims 2, 8, 18, and 28–35 under 35
U.S.C. § 103(a) as being unpatentable over Van Wonterghem, Priest, and
Yuan (US 2004/0057182 A1, published Mar. 25, 2004).
4. The Examiner rejects claims 2, 8, 18, and 28–35 under 35
U.S.C. § 103(a) as being unpatentable over Van Wonterghem, Dodson, and
Yuan.

ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follows:
Appeal 2014-008772
Application 12/858,281

4

Does the Examiner err in finding that the combination of Van
Wonterghem and Priest or Van Wonterghem and Dodson collectively would
have taught or suggested “the impedance control output forcing the
impedance OFF during a first time interval controlled by the first timer”
within the meaning of Appellants’ claim 1 and the commensurate limitations
of claims 13, 20, 26, 28, and 32?

ANALYSIS
The Examiner rejects independent claim 1 under 35 U.S.C. § 103(a)
over Van Wonterghem and Priest and alternately over Van Wonterghem and
Dodson. (Final Act. 3–13, 18–19, Ans. 2–13.) Appellants contend, inter
alia, that Van Wonterghem in combination with Priest or Dodson does not
does not teach the feature of “the impedance control output forcing the
impedance OFF during a first time interval controlled by the first timer”
(claim 1). (See App. Br. 7–16; Reply Br. 2–6.) Specifically, Appellants
contend the combination Van Wonterghem and Priest or Dodson is improper
and that the resulting device is fundamentally different from the devices
described by the individual references. In particular, Appellants contend
that Van Wonterghem does not describe or teach a timer, but instead teaches
a terminal (terminal 3) with a shortened length (compared to other terminals
(terminals 1 and 2)). (App. Br. 9–16; Reply Br. 3–6.)
We agree with Appellants’ interpretation of Van Wonterghem. Van
Wonterghem’s terminal 3 applies power immediately upon connection, but
the connection does not take place until after the connection of other
terminals (at the end of a first time interval). (App. Br. 9–16; Reply Br. 3–
6.) It is, therefore, unclear how the timing circuit of Priest or Dodson could
Appeal 2014-008772
Application 12/858,281

5

be integrated to meet the claim limitations at issue. Alternately, if the length
of Van Wonterghem’s terminal 3 was made the same as the other terminals,
and the timing circuits (of either Priest or Dodson) were integrated, the
disconnect functionality of the terminal would be eliminated — changing the
basis of operation of Van Wonterghem’s connector. (See App. Br. 9–16.)
While we disagree with Appellants’ interpretation of Priest (App. Br.
8–9) and Dodson (App. Br. 11), agreeing instead with the Examiner’s
interpretation of these references (Ans. 4–5, 8, 12), we agree with Appellants
that the Examiner’s explanation of the combination of Van Wonterghem and
Priest or Dodson is inadequate for a showing of obviousness. We cannot
sustain the Examiner’s obviousness rejection for essentially the reasons set
forth by Appellants. (App. Br. 9–16; Reply Br. 2–6.)
The Examiner fails to sufficiently explain how Van Wonterghem
could properly be combined with Priest or Dodson. Instead the Examiner
merely concludes that an ordinarily skilled artisan could have simply
substituted one timer (Van Wonterghem’s shortened terminal) with the
timing circuit of either Priest or Dodson. (See Ans. 2–13.) The Examiner’s
position is incorrect for the reasons explained by Appellants. (See App. Br.
9–16.)
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combinations of Van Wonterghem and
Priest and alternately Van Wonterghem and Dodson teach the recited
features of Appellants’ claim 1. Appellants’ independent claims 13, 20, 26,
28, and 32 include limitations of commensurate scope. Appellants’
dependent claims 2–12, 14–19, 21–25, 27, 29–31, and 33–35 depend on and
Appeal 2014-008772
Application 12/858,281

6

stand with their respective base claims. Accordingly, we reverse the
Examiner’s obviousness rejection of claims 1–35.

CONCLUSION
Appellants have shown that the Examiner erred in rejecting claims 1–
35 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejections of claims 1–35.

REVERSED

lv