Ex Parte Jung et al

Patent Trial and Appeal Board

Feb 28, 2017

10974554 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/974,554 10/26/2004 Edward K.Y. Jung 0404-003-028-000000 2883
80118 7590 03/02/2017
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
GEE, JASON KAI YIN
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
admin@constellationlaw.com
T yler @ constellationlaw. com
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
MARK A. MALAMUD, and JOHN D. RINALDO, JR.
Appeal 2016-000767
Application 10/974,5541
Technology Center 2400
Before DAVID M. KOHUT, JASON V. MORGAN, and
DAVID C. McKONE, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE2
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—8, 10-16, 18—25, and 27—30.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Searete, LLC, which is
wholly owned by Intellectual Ventures Management LLC. App. Br. 4.
2 Our Decision makes reference to Appellants’ Reply Brief (“Reply Br.,”
filed October 13, 2015), and Appeal Brief (“App. Br.,” filed December 16,
2014), and the Examiner’s Answer (“Ans.,” mailed February 20, 2015) and
Final Office Action (“Final Act.,” mailed April 18, 2014).
3 Claims 9, 17, and 26 have been cancelled.
Appeal 2016-000767
Application 10/974,554
INVENTION
The invention is directed to serial-use devices. Spec. I.4 The
independent claims on appeal are claims 1, 10, 18, and 19. Claim 1 is
representative and is reproduced below.
1. A method comprising:
detecting, via at least one computing device remote from
a serial-use device, one or more wireless signals transmitted by
the serial-use device and indicating that relinquishment of
control of the serial-use device by a user has occurred;
transmitting, via the at least one computing device remote
from the serial use device, one or more wireless purgation signals
configured to initiate purging at least a part of a memory of the
serial-use device in response to said detecting.
Microsoft Computer Dictionary 379 (5th ed. 2002) (hereinafter
“Microsoft”).
numbering; accordingly, reference herein is made only to page numbers.
REFERENCES
Kanoh et al.
Takatori
Ohmura et al.
Fukuhara et al.
US 5,812,641
US 2004/0006517 Al
US 2004/0199303 Al
US 7,456,992 B2
Sept. 22, 1998
Jan. 8, 2004
Oct. 7, 2004
Nov. 25, 2008
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REJECTIONS AT ISSUE5
Claims 1—3, 7, 8, 10-12, 15, 16, 18—20, 23, and 30 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Kanoh and
Ohmura.
Claims 4, 5, 13, 22, 25, and 28 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Kanoh, Ohmura, and Takatori.
Claims 21 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kanoh, Ohmura, and Microsoft.
Claims 6, 14, 27, and 29 are rejected under 35 U.S.C. 103(a) as
unpatentable over the combination of Kanoh, Ohmura, and Fukuhara.
ISSUES
Did the Examiner err in finding that the combination of Kanoh and
Ohmura teaches “transmitting, via the at least one computing device remote
from the serial use device, one or more wireless purgation signals configured
to initiate purging at least a part of a memory of the serial-use device in
response to said detecting,” as recited in independent claim 1?
Did the Examiner err in finding that the combination of Kanoh and
Ohmura teaches transmitting a purgation signal in response to “detecting a
transfer of possession,” as recited in claim 2?
Did the Examiner err in finding that the combination of Kanoh and
Ohmura teaches transmitting a purgation signal in response to “detecting a
number of uses of the serial-use device that have been performed,” as recited
in claim 3?
5 The Examiner has withdrawn the rejection of claim 27 under 35 U.S.C.
§112, second paragraph, for being indefinite. See Advisory Action mailed
July 11,2014.
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Did the Examiner err in finding that the combination of Kanoh and
Ohmura teaches “destroying at least part of the memory,” as recited in claim
8?
ANALYSIS
Sufficiency of the Examiner’s Rejections
Appellants argue that the Examiner6 has not clearly explained the
rejection of claim 1 in violation of 37 C.F.R. § 1.104(c)(2). App. Br. 8.
According to Appellants, the Examiner has merely cited broad portions of
the cited references and made conclusory statements that those portions
teach various aspects of claim 1, instead of providing direct quotations of the
express language of the cited references that the Examiner is relying on to
support the rejections and, to the extent such language differs from the claim
language, an explanation supported by objective evidence demonstrating
why the quoted language could be reasonably interpreted to teach the claim
limitations. Id. at 7—16. Similarly, Appellants argue that the Examiner’s
rejections of dependent claims 2, 3, and 8 are insufficient and do not satisfy
the Office’s burden to establish unpatentability. App. Br. 17—33. Compare
id. at 17—33, with id. at 7—16.
Appellants’ arguments are not persuasive. The Federal Circuit has
held that the Office carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons of the rejection, “together with such
information and references as may be useful in judging the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
6 We note that Appellants use “the Patent Office” to refer to the Examiner.
App. Br. 7.
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1356, 1363 (Fed. Cir. 2011). Thus, “all that is required of the office to meet
its prima facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132.” Id. at 1363.
Here, the Examiner notified Appellants that claim 1 is rejected under
35 U.S.C § 103(a) as obvious over the combination of Kanoh and Ohmura.
Final Act. 3—5; see also Ans. 2—6. The Examiner provided explanations and
citations to specific portions of the references, by column and line (Kanoh)
and paragraph (Ohmura) numbers. Final Act. 3—5; see also Ans. 2—6. The
Examiner likewise provide notice to Appellants of the rejections of claims 2,
3, and 8 with explanations and citations to specific portions of the
references. Final Act. 5—6; see also Ans. 6—10. Thus, we find that the
Examiner’s rejection satisfies the notice requirement of § 132, and,
therefore, establishes a prima facie case of obviousness. Cf. Jung, 637 F.3d
at 1363 (“[T]he examiner’s discussion of the theory of invalidity . . . the
prior art basis for the rejection . . . and the identification of where each
limitation of the rejected claims is shown in the prior art reference by
specific column and line number was more than sufficient to meet this
burden.”). The Examiner’s prima facie case shifts the burden to Appellants
to come forward with arguments and/or evidence to rebut the prima facie
case, and for the reasons discussed below, Appellants have failed to carry
their burden.
Appellants argue that the Examiner improperly relied on the rejection
of independent claim 1 to reject independent claims 10, 18, and 19, and as a
result, the Examiner did not account for the distinct recitations of
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Application 10/974,554
independent claims 10, 18, and 19. App. Br. 34—35; Reply Br. 9—11. We
disagree. As set forth above in regard to independent claim 1, the Examiner
carries its procedural burden of establishing a prima facie case when its
rejection satisfies the notice requirement of 35 U.S.C. § 132 by setting forth
the statutory basis of the rejection and the prior art relied upon in a
sufficiently articulate and informative manner. See Jung, 637 F.3d at 1363.
Here, the Examiner notified Appellants that, like independent claim 1,
independent claims 10, 18, and 19 are rejected under 35. U.S.C § 103(a) as
obvious over the combination of Kanoh and Ohmura. Final Act. 3—5, 6. In
rejecting claim 1, the Examiner provided explanations and citations to
specific portions of the references, and the Examiner relied on these
explanations and citations to reject independent claims 10, 18, and 19. Final
Act. 3—5, 6; see also Ans. 2—6, 10—11. Although independent claims 10, and
18, and 19 are not identical to independent claim 1, the independent claims
are very similar. In particular, independent claim 10 recites a similar
method to the method of independent claim 1 but recites the steps performed
by a serial-use device, as opposed to a computing device. Independent
claims 18 and 19 recite systems which correspond to the methods recited in
independent claims 1 and 10, respectively. We find that the Examiner’s
reference to the rejection of independent claim 1 satisfies the notice
requirement of § 132 for the rejection of independent claims 10, 18, and 19,
and therefore the Examiner has established a prima facie case of obviousness
for claims 10, 18, and 19.
Rejections under 35 U.S.C. § 103(a)
Independent Claim 1
Independent claim 1 recites “transmitting, via the at least one
computing device remote from the serial-use device, one or more wireless
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purgation signals configured to initiate purging at least a part of a memory of
the serial-use device in response to said detecting.” Appellants focus on the
Examiner’s findings regarding the terms “remote” and “in response” in this
limitation and argue that Kanoh does not teach a remote device that
transmits a purgation signal in response to detection of a relinquishment
signal as claimed. App. Br. 10-15; Reply Br. 3. In particular, Appellants
argue that Kanoh’s disclosure of “data rewrite” is not initiated by a remote
device or in response to a signal from another device, but rather is in
response to input from a key pad. App. Br. 12—13.
Appellants’ argument is not persuasive because it is not responsive to
the Examiner’s rejection. Appellants’ arguments are directed to Kanoh’s use
of clear key 502, included on key pad 5d, for clearing all data in the user
memory area 109 of a portable telephone (Kanoh, col. 4,11. 64—67);
however, the Examiner is not relying on clear key 502 to teach or suggest
clearing the user memory area 109. Rather, the Examiner is relying on
Kanoh’s disclosure regarding rewriting rental data memory section 107 for
teaching this limitation of claim 1. Final Act. 3^4. As noted by the
Examiner, Kanoh discloses that, after return of a portable telephone to a
rental shop 4-2, returned portable phone 5 transmits return data 20 to a
regional control center 2 to calculate the actual number of call units and a
use charge and, based on the received number of call units and/or use
charge data received from the regional control center, rental shop 4-2
rewrites the contents of rental data memory section 107 of the returned
portable telephone 5. Id. at 3^4 (citing Kanoh, col. 6,1. 55—col. 7,1. 23,
col. 7,11. 35—45, Fig. 6).
We agree with the Examiner’s finding that Kanoh teaches a
computing device (i.e., a regional control center) that is remote from a serial-
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use device (i.e., a portable telephone). We further agree with the Examiner’s
finding that Kanoh’s computing device transmits purgation signals to initiate
purging of at least part of a memory of the serial-use device (i.e., data
relating to number of call units and/or use charge received from the regional
control center that results in the rental shop rewriting the contents of the
rental data memory section of the returned portable telephone) in response to
detecting signals indicating relinquishment of control of the serial-use device
(i.e., receiving return data from the rental shop upon return of the portable
telephone). Appellants’ argument does not address these specific findings,
and therefore, Appellants do not apprise us of error.
Appellants further argue that Ohmura also does not teach a remote
device that transmits a purgation signal in response to detection of a
relinquishment signal, as required in independent claim 1. Reply Br. 3—7.
Appellants’ argument is not persuasive because, as set forth above, the
Examiner is relying on Kanoh, not Ohmura, to disclose these features of the
claimed invention. Reply Br. 3-7.
In view of the foregoing, Appellants arguments do not apprise us of
error in the Examiner’s determination that the combined teachings of Kanoh
and Ohmura render obvious the subject matter of claim 1. Thus, we sustain
the Examiner’s rejection of independent claim 1.
Dependent Claim 2
Claim 2 depends from claim 1 and recites that that detecting step
includes “detecting a transfer of possession.” Appellants argue that Kanoh
fails to teach transmitting a purgation signal in response to detecting a
transfer of possession. App. Br. 17—22. Specifically, Appellants argue that
Kanoh teaches transmit/receive operations in response to input from keypad
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5d, not in response to a customer returning a portable telephone to a store.
Id. at 19. We disagree with Appellants.
The Examiner is not relying on Kanoh’s disclosure of keypad 5d for
disclosing the transmission of purgation signals in response to a transfer of
possession. Instead, as discussed above in regard to claim 1, the Examiner
finds, and we agree, that Kanoh discloses that, upon return of a portable
telephone to a rental shop 4-2, returned portable phone 5 transmits return
data 20 to a regional control center 2 to calculate the actual number of call
units and a use charge, and based on the received number of call units and/or
use charge data received from the regional control center, rental shop 4-2
rewrites the contents of rental data memory section 107 of the returned
portable telephone 5. Final Act. 3^4 (citing Kanoh, col. 6,1. 55—col. 7,1. 23,
col. 7,11. 35—45, Fig. 6). The Examiner further finds that return data 20 is
sent to regional control center 2 upon return of portable telephone 5 to a
kiosk, which the Examiner finds is a transfer of possession of the telephone.
Id. at 5 (citing Kanoh, col. 6,11. 55—68). We agree with the Examiner’s
finding that Kanoh’s computing device transmits purgation signals to initiate
purging of at least part of a memory of the serial-use device in response to
detecting a transfer of possession. Thus, Appellants do not apprise us of
error in the Examiner’s rejection of dependent claim 2, and we sustain the
Examiner’s rejection of claim 2.
Dependent Claim 3
Claim 3 depends from claim 1 and recites that the detecting step
includes “detecting a number of uses of the serial-use device that have been
performed.” Appellants agree that Kanoh teaches that the number of call
units are transmitted to the regional control center upon return, but argue that
Kanoh’s purgation signals are transmitted in response to input from key pad
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5d, not in response to detecting the number of call units information being
received. App. Br. 25. Appellants’ argument is not persuasive because, as
discussed in greater detail above with regard to claim 1, we agree with the
Examiner’s finding that Kanoh discloses that the rental shop, based on the
received number of call units and use charge data received from the
regional control center, charges the user and uses the data rewrite section to
rewrite the contents of the rental data memory section. For the reasons
delineated above, we sustain the Examiner’s rejection of claim 3.
Dependent claim 8
Claim 8 depends from claim 1 and recites that purging at least part of
a memory of the serial-use device in response to detecting includes
“destroying at least a part of the memory.” Appellants argue that the relied
upon section of Kanoh mentions rewriting the data, and that the Examiner
fails to disclose how rewriting the contents of the rental memory section is
equivalent to “destroying at least a part of the memory” as required by the
claim. App. Br. 29-32. Appellants’argument is not persuasive. The
Examiner finds, and we agree, that a person of ordinary skill in the art would
understand “destroying” a computer memory would be purging the memory
such that it cannot be recovered. Id. As the Examiner finds, rewriting
memory is an example of destroying the memory, as it renders the
overwritten information unrecoverable. Final Act. 7; Ans. 9. Appellants do
not challenge these findings and thereby do not persuade us of error.
Accordingly, we sustain the Examiner’s rejection of claim 8.
Independent Claims 10, 18, and 19
Appellants do not address the Examiner’s findings in regard to
independent claims 10, 18, and 19. Thus, Appellants do not apprise us of
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error of the Examiner’s rejection of independent claims 10, 18, and 19, and
we sustain the Examiner’s rejection of these independent claims.
Claims 4—7, 11—16, 20—26, and27—20
Appellants do not present arguments for claims 4—7, 11—16, 20-26,
and 27—30. Accordingly, we summarily sustain the Examiner’s rejections of
these claims.
CONCLUSION
The Examiner did not err in finding that the combination of Kanoh and
Ohmura teaches “transmitting, via the at least one computing device remote
from the serial use device, one or more wireless purgation signals configured
to initiate purging at least a part of a memory of the serial-use device in
response to said detecting,” as recited in independent claim 1.
The Examiner did not err in finding that the combination of Kanoh
and Ohmura teaches transmitting a purgation signal in response to “detecting
a transfer of possession,” as recited in claim 2.
The Examiner did not err in finding that the combination of Kanoh
and Ohmura teaches transmitting a purgation signal in response to “detecting
a number of uses of the serial-use device that have been performed,” as
recited in claim 3.
The Examiner did not err in finding that the combination of Kanoh
and Ohmura teaches “destroying at least part of the memory,” as recited in
claim 8.
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DECISION
We AFFIRM the Examiner’s rejection of claims 1—8, 10—16, 18—25,
and 27—30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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