Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardApr 28, 201411189844 (P.T.A.B. Apr. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KYOUNG-JAE LEE and DONG-HOON LEE ____________ Appeal 2011-012303 Application 11/189,844 Technology Center 2100 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012303 Application 11/189,844 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1, 3-20, and 22. Claims 2, 21, and 23-29 have been canceled. (Br. 5, 15, 18.)1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants’ Invention The invention at issue on appeal concerns an apparatus and method for automatically switching among memory cards in a plurality of memory card slots of a multifunctional device. (Spec. ¶¶ [0002], [0003], [0016]- [0024]; Abstract.) Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method of automatically switching among memory cards inserted into a plurality of memory card slots in a multifunctional device, respectively, the method comprising: determining memory card types and a number of the memory cards inserted into the plurality of memory card slots in the multifunctional device which is not connected to a computer; obtaining data from a current memory card; determining from the data obtained from the current memory card whether to switch access to a next memory card; 1 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”) filed February 1, 2011. We also refer to the Examiner’s Answer (“Ans.”) mailed May 9, 2011. Appeal 2011-012303 Application 11/189,844 3 automatically switching access from the current memory card to the next memory card according to a predefined order, when it is determined that switching access to the next memory card is required, wherein the predefined order comprises a switching order that is defined by a predetermined order centered upon a frequency with which the memory cards are used; and obtaining data from the next memory card. Rejection on Appeal The Examiner rejects claims 1, 3-20, and 22 under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent App. Pub. No. 2005/0023339 A1, published Feb. 3, 2005 (filed June 28, 2004) (“Uno”). ISSUES Based upon our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, the pivotal issues before us follow: 1. Whether Uno is a proper prior art reference under 35 U.S.C. § 102(e)? 2. Does the Examiner err in finding that Uno discloses “automatically switching access from the current memory card to the next memory card according to a predefined order . . . centered upon a frequency with which the memory cards are used” within the meaning of Appellants’ claim 1 and the commensurate limitations of claims 9 and 13? Appeal 2011-012303 Application 11/189,844 4 ANALYSIS The Examiner rejects independent claim 1 under 35 U.S.C. § 102(e) as being anticipated by Uno. (Ans. 3-6, 16-19.) Appellants contend that Uno is not a proper prior art reference under 35 U.S.C. § 102(e) (Br. 10-11) and does not disclose the disputed features of claim 1 (Br. 11-13) – specifically, automatically switching memory card access (Br. 11-12) in a predetermined order based on the frequency the memory cards are used (Br. 12-13). We agree with the Examiner (and disagree with Appellants), that Uno is a proper prior art reference. (Ans. 16-17.) Appellants fail to antedate the reference (Uno). Appellants’ declaration does not even mention that the invention was reduced to practice (made) or constructively reduced to practice (application drafted) coupled with diligence in filing the application as required by § 1.131(b) in order to antedate a prior art reference. Even if we were to construe the various dates in Appellants’ Invention Disclosure Form (IDF) as demonstrating a constructive reduction to practice, Appellants have not explained how they establish the necessary diligence in filing their patent application. Thus, Appellants’ declaration does not meet the requirements under 37 C.F.R. § 1.131(b). We agree with Appellants, however, that the portions of Uno identified by the Examiner do not disclose the disputed features of independent claim 1. (Br. 11-13.) Specifically, the Examiner is correct that Uno describes (automatically) switching between cards in the order they are inserted (in single-drive, double-drive, or multi-drive modes). (Uno, ¶¶ [0019]-[0020], [0286]-[0301].) Uno also describes evaluating the frequency a particular type of card is used. (Uno, ¶ [0320].) As pointed out by Appeal 2011-012303 Application 11/189,844 5 Appellants, however, Uno does not describe automatically switching between inserted cards based on the frequency the card is used (or a type of card is used). (Br. 11-13.) Uno doesn’t describe any automatic switching between cards (more than a single card at any time). (Br. 11-12.) Rather, Uno describes automatically switching the order of access when a card is inserted and then removed. (Uno, ¶¶ [0293]-[0295].) Uno requires that a card be removed in order to switch to the next card. (Id.) And, Uno does not switch between cards based on frequency of use. Rather, Uno describes allocating a drive to commonly used media (see Uno, ¶ [0320]; Br. 12-13). Consequently, we are constrained by the record before us to find that the Examiner erred in finding that Uno discloses the recited features of Appellants’ claim 1. Appellants’ independent claims 9 and 13 include limitations of commensurate scope. Appellants’ dependent claims 3-8, 10- 12, 14-20, and 22 depend on and stand with claims 1, 9, and 13 respectively. Accordingly, we reverse the Examiner’s anticipation rejection of claims 1, 3-20, and 22. CONCLUSION Appellants have shown that the Examiner erred in rejecting claims 1, 3-20, and 22 under 35 U.S.C. § 102(e). DECISION We reverse the Examiner’s rejection of claims 1, 3-20, and 22. REVERSED tj Copy with citationCopy as parenthetical citation