Ex Parte Jogand-Coulomb et al

Patent Trial and Appeal Board

Aug 15, 2016

12005728 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/005,728
67813 7590
BGL/
P.O. BOX 10395
CHICAGO, IL 60610
12/28/2007
08/15/2016
FIRST NAMED INVENTOR
Fabrice Jogand-Coulomb
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.
10519/456 (SDA-1277-US) 4524
EXAMINER
LOONAN, ERIC T
ART UNIT PAPER NUMBER
2131
MAILDATE DELIVERY MODE
08/15/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte F ABRICE JOG AND-COULOMB and
ROBERT CHIN-TSE CHANG
Appeal2014-008534
Application 12/005,728
Technology Center 2100
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CRAIG.
Dissenting-in-Part Opinion filed by Administrative Patent Judge CHUNG.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-5, 25-29, 50-53, and 55-58, which constitute all
of the claims pending in this application. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is SanDisk Technologies,
Inc. App. Br. 2.
2 Claims 6-24, 30-49, and 54 have been canceled. App. Br. 9-11 (Claims
App'x).
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INVENTION
Appellants' invention relates to memory devices and a method for
content virtualization. Abstract. Claim 1 is illustrative and reads as follows:
1. A method for storing digital content in a memory
device, the method comprising:
in a removable memory card having a card connector
directly physically attachable to only a single mobile handset at
any given time:
storing digital content in a memory of the removable
memory card, where each of a plurality of different mobile
handsets that are capable of being attached to the removable
memory card expects the digital content to be stored in a
different directory; and
creating a plurality of directories in the memory of the
removable memory card, wherein each of the plurality of
directories comprises a pointer that points to a same storage
location of the digital content;
wherein each of the plurality of directories comprises a
different directory name that is titled according to a same
specific type of the digital content accessed by the mobile
handsets.
REJECTIONS
Claims 1-5, 25-29, 50-53, and 55-58 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Claims 1-5, 25-29, 50-53, and 55-58 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Liebman (US 2006/0184673 Al; published
Aug. 17, 2006) in view of Spencer (US 6,823,417 B2; issued Nov. 23,
2004).
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Application 12/005,728
ANALYSIS
Written Description
Appellants contend the Examiner erred in finding that the claims fail
to comply with the written description requirement. App. Br. 3. Appellants
argue that, in light of at least paragraphs 9 and 10 of the Specification, an
artisan of ordinary skill would have understood that the described memory
card may be a removable memory card that may be directly physically
attachable to only a single mobile handset at any given time. Id. at 4.
The Examiner provides three bases for the rejection: (1) the
Specification is silent with respect to the memory card being removable;
(2) the Specification is silent with respect to a memory card being directly
physically attachable to a handset; and (3) the Specification is silent with
respect to a memory card being attachable to only a single mobile handset at
any given time. Final Act. 2-3.
We agree with Appellants that the Examiner erred. Our reviewing
court guides that the written description "must clearly allow persons of
ordinary skill in the art to recognize that [the inventor] invented what is
claimed." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1371 (Fed.
Cir. 2010) (en bane) (citation and quotations omitted). "In other
words, the applicant must 'convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, he or she was in possession of the
invention,' and demonstrate that by disclosure in the specification
of the patent." Id. at 1371-72 (quoting Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563---64 (Fed.Cir.1991)) (emphasis added).
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Application 12/005,728
Here, we find the Specification conveys with reasonable clarity to an
artisan that the inventor was in possession of the recited "removable memory
card having a card connector directly physically attachable to only a single
mobile handset at any given time" (claim 1 ), because these claimed features
comport with the known features of at least a conventional SD memory card,
which is disclosed in the Specification (i-f 9). Our reviewing court guides,
"[t]he written description requirement must be applied in the context of the
particular invention and state of the knowledge." Ariad, 560 F.3d 1372
(quoting Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed.Cir.2005)) (emphasis
added). Paragraph 9 of the Specification describes a SD memory card,
which we find an artisan of ordinary skill would have understood as a
conventional, removable memory card with a single connector. See Spec.
i1 9. Moreover, paragraph 10 describes that the memory device may be
connected to a mobile device, such as a mobile phone handset, a game
device, a personal digital assistant (PDA), a digital camera, a digital media
player, and a card reader of a personal computer. Id. i-f 10. Reading
paragraph 10 in light of at least the description of a SD card in paragraph 9,
we find that an artisan of ordinary skill would have understood that a
conventional SD card could only be directly, physically attachable to a
single mobile phone handset at any given time. Thus, we find that at least
paragraphs 9 and 10 of the Specification reasonably convey to those skilled
in the art that the inventor had possession of the subject matter at issue as of
the filing date.
Accordingly, we reverse the rejection of claims 1-5, 25-29, 50-53,
and 55-58 under 35 U.S.C. § 112, first paragraph.
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Application 12/005,728
Obviousness
In rejecting representative claim 1, the Examiner found that Liebman
teaches or suggests all of the limitations of claim 1, except a removable
memory card having a card connector, for which the Examiner relied on
Spencer. Final Act. 4---6. The Examiner found that, in Figure 1 of Liebman,
"workstations 30a-30n may be connected to server 20 via switch 25," and
that "one of ordinary skill in the art recognizes that a switch would directly
connect a single workstation to a single storage subsystem at any one
moment in time." Id. at 5.
Appellants contend that the Examiner erred because the cited
references fail to teach or suggest "a removable memory card having a card
connector directly physically attachable to only a single mobile handset at
any given time," as recited in claim 1. App. Br. 5---6. Appellants specifically
argue that the workstations in Figure 1 of Liebman are not directly
physically attached to a memory card, as claim 1 requires. Id. Applicants
disagree with the Examiner that the memory device must be directly
physically connected with a workstation to communicate with it via a
conductive medium. Id. at 6. In Appellants' view, for two devices to be
electrically connected or coupled, it is not necessary for the two devices to
be directly physically attached as required in the claims. Id.
In the Answer, the Examiner found that server 50 of Liebman, Figure
1 "comprises memory cards." Ans. 6. The Examiner explained that, even in
a scenario in which a workstation is connected to a server without using a
switch, "Liebman still meets the scope of the stated limitation as Liebman
establishes a teaching for a path (that may be characterized as a direct path)
between the memory card and the workstation via a physical conductive
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Application 12/005,728
medium." Id. We understand the Examiner also to take the position that, if
an electrical signal is transmitted between two devices via a wire, those
devices are "directly physically attachable," as recited in claim 1. See id. at
5---6.
Appellants' arguments persuade us that the Examiner erred. We agree
with Appellants that, as shown in Figure 1 and discussed in the specification
of Liebman, multiple workstations are connected to a server that may
include storage subsystems, or the workstations are connected to a switch
that is connected to the server that may include storage subsystems. See
App. Br. 6; Liebman, Fig. 1, i-f 68. By contrast, claim 1 recites "a removable
memory card having a card connector directly physically attachable to only a
single mobile handset at any given time." We find the Examiner's
interpretation of "directly physically attachable" is overly broad. Put
another way, the Examiner is conflating the broadest possible interpretation
with the broadest reasonable interpretation. We find the Examiner's
broadest possible interpretation is an unreasonable interpretation for the
reasons stated infra.
The words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the Specification. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). We conclude the plain meaning of
"directly" in this context is "in immediate physical contact." (Directly,
MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY (10th ed. 2001)
(first definition)). 3 We do not find the plain meaning inconsistent with
Appellants' Specification. Thus, we agree with Appellants that the
3 See 37 C.F.R. § 41.30 regarding use of dictionaries, "which may be cited
before the Board."
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Application 12/005,728
Examiner has not has not shown with sutlicient clarity in the Final Action
how Figure 1 and the specification of Liebman, alone or in combination with
the cited teachings of Spencer, teach or suggest the disputed limitation.
Thus, on the record before us, we do not sustain the 35 U.S.C.
§ 103(a) rejection of independent claim 1. We also do not sustain the
35 U.S.C. § 103(a) rejection of independent claim 25, which contains a
similar limitation ("a card connector configured to directly physically attach
the removable memory card to only a single mobile handset at any given
time") and for which Appellants refer to and rely on the arguments made for
claim 1. App. Br. 7-8. Dependent claims 2-5, 26-29, 50-53, and 55-58
fall with the independent claims from which they depend.
DECISION
We reverse the Examiner's decision rejecting claims 1-5, 25-29, 50-
53, and 55-58.
REVERSED
7
CHUNG, Administrative Patent Judge, DISSENTING-IN-PART
I respectfully dissent-in-part from my esteemed colleagues' findings
in the majority decision ("Majority Decision"). I disagree that claim l's
"card connector directly physically attachable to only a single mobile
handset at any given time" (emphasis added) complies with the written
description requirement under 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 112 (pre-AIA), first paragraph states "[t]he specification
shall contain a written description of the invention, and of the manner and
process of making and using it, in such full, clear, concise, and exact terms"
(emphasis added). Moreover, as acknowledged by the Majority, our
reviewing court state the written description "must clearly allow persons of
ordinary skill in the art to recognize that [the inventor] invented what is
claimed." Majority Decision 3 (emphasis added).
Here, fullness, clarity, and exact terms under 35 U.S.C. § 112 (pre-
AIA), first paragraph are at issue. That is, Appellants' Specification does
not state explicitly a "card connector directly physically attachable to only a
single mobile handset at any given time" (emphasis added). See generally
Spec. Rather, Appellants' Specification merely states "a memory card, such
as an SD" (id. i-f 9) and a "memory device 100 is connectable to ... a mobile
device" (id. i-f 10).
Paragraphs 9 and 10 of Appellants' Specification are broader than
Appellants' limitation "card connector directly physically attachable to only
a single mobile handset at any given time" (emphasis added) as recited in
claim 1. Stated differently, paragraphs 9 and 10 of Appellants' Specification
explicitly and implicitly does not disavow a card connector being directly
physically attachable to more than one mobile handset.
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Appeal2014-008534
Application 12/005,728
Appellant must disavow a card connector being directly physically
attachable to more than one mobile handset in its Specification because there
is at least one example of a card connector being attachable to more than one
mobile handset existing before the December 28, 2007 filing date of
Appellants' application. Figure 2 of Lo (US 2005/0182858 Al; published
Aug. 18, 2005) is reproduced below.
20 10
\~ I
l
~--f ~
L _J 1
151 141
FIG.2
30
I
r-l,
......
L _J
Figure 2 of Lo illustrates card connector l 0 being attachable to more
than one external device. Lo i-fi-125-27. Lo illustrates card connector 10
connects to external device 20 via SD memory card interface 141 while
simultaneously connecting to external device 30 via USB interface 151. Id.
,-r,-r 6, 21, 25-27.
Lastly, Appellants' added the claim 1 limitation "only" (emphasis
added) via Amendment filed September 22, 2011. The aforementioned
claim 1 limitation was added to maneuver around the applied reference
Liebman. See page 5-8 of Remarks filed September 22, 2011. My
reluctance with permitting Appellants to amend claim 1 with the
aforementioned limitation is that this creates a mechanism for a future
appellant to later amend an originally filed claim to include latent (and
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Application 12/005,728
possibly lucrative) technologies that were unknown to an appellant at the
time of filing.
Accordingly, for the reasons stated supra, I dissent-in-part from my
esteemed colleagues findings.
3