Ex Parte Kim

Board of Patent Appeals and Interferences

Jun 28, 2012

11184299 (B.P.A.I. Jun. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KI IL KIM
____________

Appeal 2010-009570
Application 11/184,299
Technology Center 2800
____________

Before ELENI MANTIS MERCADER , BRADLEY W. BAUMEISTER,
and DENISE M. POTHIER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 28, 29, 32-35, 38-55, and 57-65. Claims 1-27, 30, 31, 36, and 37
have been canceled, while claim 56 has been object to as being dependent on
a rejected base claim, but would otherwise be allowable if rewritten in
independent form. See App. Br. 5. We have jurisdiction under 35 U.S.C. §
6(b).
We Affirm-in-Part.

INVENTION
Appellant’s claimed invention is directed to a mobile entertainment
and communication device in a palm-held size housing that has one or more
replaceable memory card sockets that receives a blank memory card for
recording data directly from the Internet (Abstract). The socket opening is
asymmetrically shaped at least at one corner for preventing incorrect
insertion of the card, such as the cutoff corner of card 200 shown in Figure 6
(see Spec. ¶ 14:19-22).
Independent claim 28, reproduced below, is representative of the
subject matter on appeal.
28. A palm hand held electronic device in a housing, the device
comprising:
a replaceable flash memory card and a socket that includes a socket
opening in the housing;
a digital camera configured to capture at least one of sounds, still
images, moving images, or any combination thereof, the digital camera
being located in the housing;
the flash memory card configured to store data captured from the
camera and having at least one engagement hole;
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the socket opening being asymmetrically shaped at least at one corner
for preventing incorrect insertion of the card;
the socket opening being configured to receive the flash memory card
longitudinally;
the socket opening comprising an internal engagement element for
retaining the card fully within the socket opening, said socket opening being
provided with a spring for removing the card;
when the entire card is positioned in the socket opening, asymmetrical
shapes of the card and of the socket opening mate each other in the socket
opening, wherein the spring facilitates the automatic removal of the card
from the socket opening by spring power upon releasing the internal
engagement element of the socket opening;
the socket opening being configured to receive and eject the card
longitudinally to and from the socket opening; and
the socket and the card being operatively connected to a
microprocessor, a microphone and the camera.

REFERENCES and REJECTIONS
The Examiner rejected claims 28, 29, 32, and 59-65 under 35 U.S.C.
§ 103(a) based upon the teachings of “Locatio Beginner's Guide”
(hereinafter “Locatio”, dated July 30, 1999) in view of Nishimura (U.S.
6,398,567 B1) further in view of Takada (U.S. 6,508,402 B1) and Ozawa
(U.S. 5,870,710 A).
The Examiner rejected claims 33, 34 and 39-50 under 35 U.S.C.
§ 103(a) based upon the teachings of Takada in view of User's Manual for
Nokia 9110 Communicator (hereinafter “Nokia”).
The Examiner rejected claims 35 and 38 under 35 U.S.C. § 103(a)
based upon the teachings of Takada, Nokia, and Nishimura.
The Examiner rejected claims 51-55 under 35 U.S.C. § 103(a) based
upon the teachings of Nishimura and Nokia.
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The Examiner rejected claims 57 and 58 under 35 U.S.C. § 103(a)
based upon the teachings of Locatio, Nishimura, Takada and Ozawa, further
in view of Mack (U.S. 6,510,325 B1).

ISSUES
The pivotal issues are whether the Examiner erred in finding that:
1. Takada cures the deficiency of the Locatio and Nishimura
combination by teaching the limitations of “the socket opening
being asymmetrically shaped at least at one corner for preventing
incorrect insertion of the card” and “asymmetrical shapes of the
card and of the socket opening mate each other in the socket” as
recited in claim 28;
2. the combination of Locatio in view of Nishimura, Takada, and
Ozawa teaches that “the memory card is configured to store data
comprising sounds, still images, moving images, real time moving
images, music with images, combined sounds and moving images,
combined sounds and real time moving images, combined sounds
and text, and GPS location information with images” as recited in
claim 62;
3. Nishimura teaches a memory card being ejected solely by way of
the mechanism included in the socket opening as required by claim
64;
4. Takada teaches the limitation of “at least one internal engagement
element in the socket opening engaging the at least one
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engagement feature for retaining the memory card fully within the
socket opening” as recited in claim 33;
5. Nishimura teaches a socket being asymmetrically shaped at least at
one corner for preventing incorrect insertion of the card as recited
in claim 51;
6. Nishimura teaches a latching device for retaining the memory card
in the socket as required by claim 55; and
7. Mack teaches “at least one sensor configured to activate the
camera and the microphone without a user's control upon detecting
one of sounds, motions, images or light” as recited in claims 57
and 58.

PRINCIPLES OF LAW
Claimed features that differ from the prior art solely on the
basis of “non-functional descriptive material,” are generally not given
patentable weight when determining patentability of an invention over
the prior art. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
The Examiner need not give patentable weight to descriptive
material absent a new and unobvious functional relationship between
the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1583-84 (Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed.
Cir. 2004).
The claims, of course, do not stand alone. Rather, they
are part of a “fully integrated written instrument” consisting
principally of a specification that concludes with the claims.
For that reason, claims “must be read in view of the
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specification, of which they are a part.” . . . [T]he specification
“is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).

A “person of ordinary skill has good reason to pursue the known
options within his or her technical grasp.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).

ANALYSIS
1. Analysis with respect to the rejection of claims 28, 29, 32, 59-61,
63, and 65.
Appellant argues that the Examiner erred in finding that Takada cures
the deficiency of the Locatio and Nishimura combination by teaching the
limitations of “the socket opening being asymmetrically shaped at least at
one corner for preventing incorrect insertion of the card” and “asymmetrical
shapes of the card and of the socket opening mate each other in the socket”
as recited in claim 28 (App. Br. 15).
Appellant explains that the card engagement portion (33) of Takada
does not teach a socket opening being asymmetrically shaped at least at one
corner for preventing incorrect insertion of the card, and that contrary to the
Examiner's assertion, card engagement portion (33) is not part of the socket
opening (App. Br. 16). According to Appellant, the card engagement
portion (33) is a part of the card pusher which is movable up and down when
the card is inserted in or ejected from the card receiving space (App. Br. 16,
citing to Takada, col. 3, ll. 5-7). Appellant urges that Figure 7 does not
show any opening because the card 12 is inserted in the card receiving space
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8, while Figure 6 shows a socket opening defined by the Examiner, which
does not show the socket opening being asymmetrically shaped at least at
one corner for preventing incorrect insertion of the card (App. Br. 16).
Appellant further cites to the declaration of Joseph C. McAlexander
III1 stating that the portion 33 is simply a movable member that is moved
back and forth (App. Br. 17) and that the engagement element portion 33 is
configured for ejecting the IC card (App. Br. 18).
We do not agree with Appellant’s argument. We agree with the
Examiner that if the card of Tanaka’s Figures 11-12 was to be inserted in the
asymmetrical shape of the opening Figures 6-7, it would not be fully
inserted, and thus, the asymmetrical shape of the opening of Figures 6 and 7
is intended for only cards with a cutoff corner (Ans. 20). We also agree with
the Examiner (Ans. 20) that the claims do not recite whether the socket
opening must always stay permanently at a single shape or form. We further
note that the claims do not preclude the opening from being a filled opening
with the card. Finally, we agree with the Examiner (Ans. 20) that the
member 33 is shaped in a way that matches the cutoff corner of the card at
the inclined surface 34 so that the card entirely fits in the socket opening as
shown in Figures 6 and 7 of Tanaka. Thus, the fact that the member 33 of
the pusher 16 is configured for ejecting and constitutes an additional
function does not preclude member’s 33 shape from accommodating the
card with the cutoff corner.

1 Notably, 37 C.F.R. § 41.37(c)(1)(ix) requires that any evidence entered by
the Examiner and relied upon by Appellant in the appeal be submitted, along
with a statement setting forth where in the record that evidence was entered.
Appellant has not provided such a statement.
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Accordingly, we affirm the Examiner’s rejection of claim 28 and, for
the same reasons, the rejections of claims 29, 32, 59-61, 63, and 65. which
were not separately argued.
2. Analysis with respect to the rejection of claim 62
Appellant further argues that the Examiner has not shown that that the
prior art teaches that the card is “insertable longitudinally in the socket
opening without any separate case or separate card carrier” as recited in
claim 62 (App. Br. 19). Appellant also argues that Ozawa (col. 7, ll. 22-23),
contrary to the Examiner’s assertion, does not teach the limitation of “the
memory card is configured to store data comprising sounds, still images,
moving images, real time moving images, music with images, combined
sounds and moving images, combined sounds and real time moving images,
combined sounds and text, and GPS location information with images” as
recited in claim 62.
We do not agree with Appellant. The term “insertable longitudinally”
without any reference as to respect to what else provides no point of
reference. Thus, either Nishimura Figure 1 or Takada Figure 6 shows such
longitudinal insertion of a card in the socket opening as broadly as recited.
Neither Nishimura nor Takada indicates a requirement of a separate card
carrier, and thus, either of these references satisfies the limitation of
“insertable longitudinally in the socket opening without any separate case or
separate card carrier.”
We agree with Appellant that Ozawa does not teach the
limitation of “the memory card is configured to store data comprising
sounds, still images, moving images, real time moving images, music
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with images, combined sounds and moving images, combined sounds
and real time moving images, combined sounds and text, and GPS
location information with images” as recited in claim 62 for the
reasons articulated in the Appeal Briefs (App. Br. 19-20; and Reply
Br. 3-4). However, even if Ozawa taught this feature, it would have
been cumulative evidence since Takada already teaches that the
memory card can be insertable into an electronic device, including a
camera, a personal computer, or a recording machine (col. 1, ll. 11-
18), which at least store still and moving images and sounds. Also,
the types of information that can be stored as recited in the disputed
limitation constitute non-functional descriptive material not afforded
patentable weight. See Gulack, 703 F.2d at 1385 Lowry, 32 F.3d at
1583-84; Ngai, 367 F.3d at 1338.
Accordingly, we affirm the Examiner’s rejection of claim 62.
3. Analysis with respect to the rejection of claim 64
Appellant argues that claim 64 requires a memory card be ejected
solely by way of the mechanism included in the socket opening (App. Br.
21). Appellant explains that, since the control member 18 of Nishimura is
located outside (externally to) the card receiving space 3 (App. Br. 21 (citing
to col. 7, ll. 23-29)) and Appellant specifically states that the “control
member 18 is configured to eject the IC card, being located outside the card
receiving space 3” (id. (emphasis in original)), then Nishimura does not
disclose a mechanism for removing the card included in the opening and the
card being ejected “solely by the way of said mechanism” as recited in claim
64 (id.).
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We do not agree with Appellant’s argument. We agree with the
Examiner that in Nishimura “the card is ejected from the socket opening
solely by way of a mechanism that includes the push plate 9 connecting
with springs 14 upon the release of engagement element 14, 31, 24 from the
engagement hole (Nishimura, Figs. 10-16)” (Ans. 21 (emphasis in original);
push plate 9 refers to Nishimura’s slide plate 9). Furthermore, we agree with
the Examiner that the limitation was interpreted in a manner consistent with
the Specification in which a spring facilitates removal of the card upon
release of the pin from the socket opening (Fig. 4). See id. The Examiner
construed the claim consistent with Appellant’s Specification which is the
single best guide to the meaning of a disputed term. See Phillips, 415 F.3d
at 1315.
Thus, we affirm the Examiner’s rejection of claim 64.
4. Analysis with respect to the rejection of claims 33, 39, 43, 45, and
47.
Appellant argues that Takada does not teach the limitation of “the
socket opening being asymmetrically shaped at least at one corner for
preventing incorrect insertion of the card” as recited in claim 33 (App. Br.
21).
For the same reasons as those articulated in section 1 of the Analysis,
we do not agree with the Appellant.
Appellant further argues that Takada does not teach the limitation of
“at least one internal engagement element in the socket opening engaging
the at least one engagement feature for retaining the memory card fully
within the socket opening” (App. Br. 22). Appellant explains that Takada’s
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element 16 is a card pusher configured to be pushed down by the IC card
when it is inserted and to push out the IC card 12 when it is ejected (citing to
col. 3, ll. 63-67), and thus, the card pusher 16 is not configured to retain the
IC card in the card receiving space (App. Br. 22).
We do not agree with Appellant’s argument. We agree with the
Examiner that the engagement element 16 (including portions 17 and 33) of
the socket 1, located internally from wall 19 (see Fig. 6), engages with the
card 12 in a way that stores potential energy by a locking mechanism when
the card is fully pushed in thereby retaining the card fully in the socket
opening (see Ans. 21-22). We also agree with the Examiner’s finding that
the potential/spring energy is accumulated when the card is pushed in for a
first time, and released when being unlocked by the card being pushed in
again for a second time thereby automatically releasing the card from the
socket opening. Spring 26 facilitates removal of the card upon the lever
being released to an un-pressured position (Takada, Figs. 6-7, 9-10, col. 5, ll.
25-45, col. 6, ll. 6-25).
Accordingly, we affirm the Examiner’s rejection of claim 33, and for
the same reasons the rejections of claims 39, 43, 45, and 47, which were not
separately argued.
5. Analysis with respect to claims 34, 40, 44, 46, and 48
Appellant raises similar arguments to those raised with respect to
claim 62 regarding the card being insertable longitutinally in the socket
opening (App. Br. 22). For the same reasons as articulated supra, we affirm
claims 34, 40, 44, 46, and 48.

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6. Analysis with respect to the rejection of claim 41 and 42
Appellant argues that Nokia does not teach that the card stores data
from the internet (App. Br. 23).
We agree with the Examiner (Ans. 22), that Nokia teaches storing
images which are downloaded in a memory device (see Nokia pg. 170
stating “[d]ownloaded images . . . take up significant amounts of memory
space”). While Nokia does not state the source of the downloaded images,
Nokia certainly provides such capability since the table of contents lists
navigating the WWW. One skilled in the art at the time of the invention
would readily recognize the capability of downloading images from the
internet to a memory device such as a memory card. A “person of ordinary
skill has good reason to pursue the known options within his or her technical
grasp.” KSR, 550 U.S. at 421.
Thus, we affirm the rejections of claims 41 and 42.
7. Analysis with respect to the rejection of claims 49 and 50
Appellant argues that Takada suggests that the card pusher 16 be used
for ejecting the IC card 12, and thus, the card pusher has nothing to do with
an engagement element (App. Br. 24). In Appellant’s view, the card pusher
16 does not teach or suggest the limitation “wherein the at least one internal
engagement element” as recited in claims 49 and 50 (emphasis added).
We do not agree. As we stated in section 4 of our Analysis, Tanaka
teaches an engagement mechanism as recited.
Accordingly, we affirm the Examiner’s rejection of claims 49 and 50.

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8. Analysis with respect to the rejection of claims 51-54
Appellant argues that Nishimura does not teach a socket being
asymmetrically shaped at least at one corner for preventing incorrect
insertion of the card (App. Br. 25).
We do not agree. We agree with the Examiner that the claims do not
preclude a broad, but reasonable interpretation wherein:
socket 6 has elements 18, 32, 21, 20, 33 creating asymmetry at
one corner intended to prevent incorrect insertion of the card
such that when the card is inserted correctly the hole 17a locks
in the socket by the protrusion 24, 16 of element 20 that is held
by button 18 and spring 21; the card when being incorrectly
inserted causes the button mechanism staying depressed and the
card remains in unlocked state and would fall out if the socket
is held longitudinally with the socket opening pointing to the
gravity (Nishimura, Figs. 10-15).
Ans. 22-23.
In other words, we agree that the latching mechanism at the upper
right hand corner of socket 6 creates an asymmetry which meets the disputed
limitation (see Fig. 10). We further note that claim 51 does not recite any
requirement of “asymmetrical shapes of the card and of the socket opening
mate each other in the socket” as recited in claim 28. As such the
asymmetry of Nishimura’s card does not have to match the asymmetry of
the socket.
Accordingly, we affirm the Examiner’s rejection of claims 51-54.
9. Analysis with respect to the rejection of claim 55
Appellant argues that Nishimura, at column 7, lines 23-29, states:
“when the control member 18 is pushed inwardly, the resilient lock arm 15
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is displaced outwardly to disengage the engagement portion 16 from the
recess 17a or protrusion 17b, thereby establishing a lock released state of the
card ejecting member 9” (App. Br. 26). Thus, Appellant submits that the
human fingers which are used to release the lock have nothing to do with the
latching device configured to retaining the memory card in the socket as
recited in claim 55 (App. Br. 26).
We are persuaded by Appellant’s argument. In particular, we note
that mapping the human finger to a latching device for retaining the memory
card in the socket is unreasonable. If the Office does not allow Applicants to
inferentially claim the human body, we do not find reasonable a claim
interpretation which equates latching with a human finger.
Accordingly, we reverse the Examiner’s rejection of claim 55.
10. Analysis with respect to the rejection of claim 57 and 58
The Appellant argues that Mack does not teach “at least one sensor
configured to activate the camera and the microphone without a user's
control upon detecting one of sounds, motions, images or light” as recited in
claims 57 and 58.
The Appellant argues that:
Mack discloses the anti-theft security system where the
telephone company can transmit a signal to the user's
telephone to activate the theft mode signal detector 30 to
activate the camera or transmit a signal to the theft mode signal
detector 30 that will automatically activate the camera as soon
as the telephone number begins to be entered via the
keypad. The telephone company remotely controls the
telephone by transmitting a signal to the theft mode signal
detector, which detects the signal from the telephone company
and activates the anti-theft functions as soon as the signal is
received or the telephone number is entered. Thus, the theft
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mode signal detector is too remote to teach anyone of motion,
sound, image, and light detectors, and Mack does not teach or
suggest a sensor configured to activate the camera and the
microphone without a user's control upon detecting one of
sounds, motions, images or light.
App. Br. 27.
We do not agree. We agree with the Examiner that Mack discloses a
device comprising an anti-theft security system having a camera, a
microphone, and at least one sensor adapted for activating the camera and
the microphone without a user’s control (Mack , col. 7, l. 58- col. 8, l. 30;
wherein the user contacts the phone company which then transmits a signal
that is detected by sensor 30; the sensor then activates the camera and
microphone) upon detecting typing motions, images or light (Mack, col. 7, l.
58- col. 8, l. 30, wherein the camera and microphone are activated to record
the thief’s activities upon detecting typing motions of the thief) (Ans. 19).
Thus, we affirm the Examiner’s rejections of claims 57 and 58.
11. Analysis with respect to the rejection of claims 35 and 38
Appellant argues that claim 35 and 38 should be reversed based on
their dependence from claims 33 and 34. App. Br. 24.
We affirm the rejection of claims 35 and 38 as no separate arguments
of patentability were made.

CONCLUSIONS
The Examiner did not err in finding that:
1. Takada cures the deficiency of the Locatio and Nishimura
combination by teaching the limitations of “the socket opening
being asymmetrically shaped at least at one corner for preventing
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incorrect insertion of the card” and “asymmetrical shapes of the
card and of the socket opening mate each other in the socket” as
recited in claim 28;
2. the combination of Locatio in view of Nishimura, Takada, and
Ozawa teaches that “the memory card is configured to store data
comprising sounds, still images, moving images, real time moving
images, music with images, combined sounds and moving images,
combined sounds and real time moving images, combined sounds
and text, and GPS location information with images” as recited in
claim 62;
3. Nishimura teaches a memory card be ejected solely by way of the
mechanism included in the socket opening as required by claim 64;
4. Takada teaches the limitation of “at least one internal engagement
element in the socket opening engaging the at least one
engagement feature for retaining the memory card fully within the
socket opening” as recited in claim 33;
5. Nishimura teaches a socket being asymmetrically shaped at least at
one corner for preventing incorrect insertion of the card as recited
in claim 51; and
6. Mack teaches “at least one sensor configured to activate the
camera and the microphone without a user's control upon detecting
one of sounds, motions, images or light” as recited in claims 57
and 58.
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The Examiner erred in finding that Nishimura teaches a latching
device for retaining the memory card in the socket as required by claim 55
by mapping the human finger to the latching mechanism.

DECISION
The Examiner’s decision rejecting claims 28, 29, 32-35, 38-54, and
57-65 under 35 U.S.C. § 103 is affirmed. The Examiner’s rejection of claim
55 under 35 U.S.C. § 103 is reversed.
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)(2010).

AFFIRMED-IN-PART

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