Ex Parte Jung et al

Patent Trial and Appeal Board

Sep 6, 2013

10974554 (P.T.A.B. Sep. 6, 2013)

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.
29/326,974 10/28/2008 YUJI KATAOKA F8050.0007 1408
32172 7590 09/09/2013
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
SIKDER, SELINA
ART UNIT PAPER NUMBER
2912
MAIL DATE DELIVERY MODE
09/09/2013 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 EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
MARK A. MALAMUD, and JOHN D. RINALDO JR.
_____________

Appeal 2011-001203
Application 10/974,554
Technology Center 2400
______________

Before, DAVID M. KOHUT, JASON V. MORGAN, and
DAVID C. McKONE, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001203
Application 10/974,554

2
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-25.
1
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method and system of purging data from
devices. Abstract. Claim 1 is representative of the invention and is
reproduced below:
1. A method comprising:
detecting that relinquishment of control of a serial-use
device has likely occurred, said serial-use device comprising: at
least one of a still image device or a motion image device; and
automatically purging a user memory of the serial-use
device in response to said detecting, the user memory is a
portion of a device memory available for a user to store still
image data or motion image data entered, selected or created by
the user.

REFERENCES
Kanoh US 5,812,641 Sept. 22, 1998

Takatori US 2004/0006517 A1 Jan. 8, 2004

Ohmura US 2004/0199303 A1 Oct. 7, 2004

Iida US 7,092,010 B2 Aug. 15, 2006
(filed July 25, 2002)

MICROSOFT COMPUTER DICTIONARY 379 (5th ed. 2002) (Hereinafter referred
to as “Microsoft”).

1
Claim 26 was previously cancelled.
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Application 10/974,554

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REJECTIONS AT ISSUE
2

Claims 1-4, 6-20, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kanoh and Ohmura. Ans. 5-9.
Claims 4, 5, 13, 22, and 25, are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kanoh, Ohmura, and Takatori.
Ans. 9-10.
Claims 3 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kanoh, Ohmura, and Iida. Ans. 10.
Claims 21 and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kanoh, Ohmura, and Microsoft. Ans.
11.

ISSUES
Did the Examiner err in finding the combination of Kanoh and
Ohmura teaches or suggests purging user memory of a serial-use device in
response to detecting a relinquishment of control, as required by independent
claims 1, 10, 18, and 19?
Did the Examiner err in finding the combination of Kanoh and
Ohmura teaches or suggests wherein detecting comprises “detecting a
transfer of possession,” as recited in claim 2?
Did the Examiner err in finding the combination of Kanoh and
Ohmura teaches or suggests wherein detecting comprises “detecting a
proximity to a number of authorized uses,” as recited in claim 3?

2
The Examiner has withdrawn the objections of claims 2-4, 11-13, and 20-
22. Ans. 3.
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Application 10/974,554

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Did the Examiner err in finding that the combination of Kanoh and
Ohmura teaches or suggests wherein detecting comprises “detecting a
proximity to a duration of authorized use,” as recited in claim 4?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s rejection of the claims and in the Examiner’s Answer in
response to Appellants’ Appeal Brief. We concur with the conclusions
reached by the Examiner. In addition, below we highlight the following
arguments for emphasis.
Regarding each of independent claims 1, 10, 18, and 19, Appellants
argue that Kanoh fails to teach automatically purging data in response to
detecting a relinquishment of control. App. Br. 21, 26, 29, and 33. Instead,
Appellants contend that Kanoh teaches clearing the memory when a “next
user” presses the clear key. App. Br. 21, 26, 29, and 33. While we agree
with Appellants that Kanoh does teach that a “next user” must press a key in
order for the memory to be cleared, we also agree with the Examiner that, in
another embodiment, Kanoh teaches that the rental shop can clear the data
after the phone is returned to the store, i.e., the return indicating a
relinquishment of control. Ans. 13. Additionally, the Examiner has
supplied a secondary reference to support that it was known in the art to
erase data upon relinquishment of control. Ans. 14. Specifically, the
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Examiner finds that Ohmura teaches automatically erasing pictures from a
digital camera in a rental car when the vehicle is returned to the store. Ans.
14. We agree with the Examiner and Appellants do not address the
Examiner’s specific findings.
Appellants also argue that the Examiner’s combination of Ohmura
with Kanoh relies upon impermissible hindsight. App. Br. 22, 30, and 33.
We disagree. As explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of Appellants’ invention and does not include
knowledge gleaned only from Appellants’ disclosure.
Thus, for all the reasons indicated supra, we sustain the Examiner’s
rejection of independent claims 1, 10, 18, and 19, and dependent claims 5-9,
11-17, and 20-25, which Appellants do not argue separately with
particularity (App. Br. 22, 27, and 33-34).
Regarding claim 2, Appellants argue that Kanoh does not teach
“detecting a transfer of possession,” because the Examiner’s finding only
indicates that Kanoh reads data stored in the memory. App. Br. 23.
However, the Examiner finds that Kanoh teaches returning a device to a
store, which the Examiner interprets as detecting a transfer of possession.
Ans. 15. We agree with the Examiner and find the interpretation to be
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Application 10/974,554

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reasonable. Additionally, the Examiner finds, and we agree, that Ohmura
also teaches the disputed limitation since when a rental car is returned a
relinquishment of control occurs and is therefore detected. Ans. 15.
Appellants do not address the Examiner’s specific findings with respect to
Ohmura. Therefore, we sustain the Examiner’s rejection of claim 2.
Regarding claim 3, Appellants argue that Kanoh does not teach
“detecting a proximity to a number of authorized uses” because Kanoh only
teaches detecting the number of call units upon return. App. Br. 24.
However, the Examiner finds Iida teaches this limitation since Iida teaches
indicating when a predetermined number of uses have been reached and not
allowing storage of additional information. Ans. 16; see also Iida, col. 5, ll.
30-55. Thus, the Examiner finds that it is the combination of Iida’s
monitoring of a predetermined number of uses with Kanoh’s purging of data
upon a relinquishment of control that teaches the disputed limitation. Ans.
15-16. Again, Appellants do not address the Examiner’s finding with
respect to the Iida reference. As such, we agree with the Examiner and
sustain the Examiner’s rejection of claim 3.
Regarding claim 4, Appellants argue that Kanoh does not teach
“detecting a proximity to a duration of authorized use,” because Kanoh only
teaches measuring time in the form of call units. App. Br. 26. However, the
Examiner finds that Takatori teaches this limitation since Takatori teaches a
rental period that includes a week, day, hour, etc. Ans. 17; see also
Takatori, ¶¶ [0034] – [0036]. Thus, the Examiner finds that it is the
combination of Takatori’s rental periods with Kanoh’s purging of data upon
a relinquishment of control that teaches the disputed limitation. Ans. 16-17.
Again, Appellants do not address the Examiner’s finding with respect to the
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Takatori reference. As such, we agree with the Examiner and sustain the
Examiner’s rejection of claim 4.
Lastly, we note that Appellants’ Reply Brief does nothing more than
argue that the Examiner has not established a prima facie case of
unpatentability and does not provide any additional arguments toward the
Examiner’s findings. Reply Br. 3-8. We disagree, as we find that the
Examiner has provided a prima facie case of unpatentability through the
combination of the references and the Examiner’s findings set out through
the Examiner’s Answer. Thus, we sustain the Examiner’s rejection of claim
1-25.

CONCLUSION
The Examiner did not err in finding the combination of Kanoh and
Ohmura teaches or suggests purging user memory of a serial-use device in
response to detecting a relinquishment of control, as required by independent
claims 1, 10, 18, and 19.
The Examiner did not err in finding the combination of Kanoh and
Ohmura teaches or suggests wherein detecting comprises “detecting a
transfer of possession,” as recited in claim 2.
The Examiner did not err in finding the combination of Kanoh and
Ohmura teaches or suggests wherein detecting comprises “detecting a
proximity to a number of authorized uses,” as recited in claim 3.
The Examiner did not err in finding the combination of Kanoh and
Ohmura teaches or suggests wherein detecting comprises “detecting a
proximity to a duration of authorized use,” as recited in claim 4.

Appeal 2011-001203
Application 10/974,554

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SUMMARY
The Examiner’s decision to reject claims 1-25 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)(1)(iv).
AFFIRMED

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