Ex Parte Macor

Patent Trial and Appeal Board

Oct 10, 2017

12928280 (P.T.A.B. Oct. 10, 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.
12/928,280 12/08/2010 James Joseph Macor 39114.00009 3942
7590
James J. Macor
P.O. Box 1450
Jackson, NJ 08527
EXAMINER
NEW AY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
10/10/2017 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 JAMES JOSEPH MACOR1
Appeal 2016-003949
Application 12/928,280
Technology Center 3700
Before JAMES P. CALVE, JILL D. HILL, and ROBERT L. KINDER,
Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 10—20. Appeal Br. 3. The Examiner has withdrawn
claims 1—9 and closed prosecution on those claims.2 Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Mr. Macor is identified as the real party in interest. Appeal Br. 3.
2 Appellant challenges the Examiner’s decision to withdraw claims 1—9 from
further consideration. See Appeal Br. 12. We discuss that challenge below.
Appeal 2016-003949
Application 12/928,280
CLAIMED SUBJECT MATTER
Appellant’s claims relate to visual identification and authentication of
a collectable object via a means for easily accessing and comparing detailed
digital images of the unique appearance characteristics of an object. Spec. 1.
Claim 10, the sole independent claim on appeal, is reproduced below.
10. A solid-state USB Flash Drive type data storage device
for use in combination with at least one collectable object; said
solid-state USB Flash Drive type data storage device having, at
least in part, an immutable integrated circuit partition, and said
solid-state USB Flash Drive type data storage device being
detached from said collectable object and electronically
configured to store at least one immutable digital image of at
least one unique appearance characteristic of said at least one
collectable object, said solid-state USB Flash Drive type data
storage device being provided with tamper resistant visual
markings of said at least one collectable object so as to provide
association of said solid-state USB Flash Drive type data
storage device with said at least one collectable object, and, said
solid-state USB Flash Drive type data storage device further
comprising at least one immutable electronic link that fetches a
predetermined remote database related to said at least one
collectable object, and, said solid-state USB Flash Drive type
data storage device being compatible with a standard computer
system.
REJECTIONS
Claims 10—15 and 17—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over DeFabio, Jr. (US 6,250,549 Bl, iss. June 26, 2001)
(“DeFabio”), Rostampour (US 2006/0026339 Al, pub. Feb. 2, 2006), and
Me William (US 6,839,453 Bl, iss. Jan. 4, 2005).
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
DeFabio, Rostampour, McWilliam, and Tank (US 6,827,209 Bl, iss. Dec. 7,
2004).
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Appeal 2016-003949
Application 12/928,280
ANALYSIS
Claims 10—15 and 17—20 Rejected Over
DeFabio, Rostampour, andMcWilliam
Appellant argues claims 10-15 and 17—20 as a group, presenting
arguments only for the patentability of claim 10. Appeal Br. 7—10. We
select claim 10 as representative, with claims 11—15 and 17—20 standing or
falling with claim 10. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that DeFabio discloses a non-volatile electronic
data storage device (storage medium 36) for use with collectable object 32.
Final Act. 3. The Examiner finds that Rostampour teaches solid-state USB
flash drives with an immutable integrated circuit partition as a type of non­
volatile electronic data storage device and determines it would have been
obvious to substitute a USB flash drive for DeFabio’s storage device 36 as a
simple substitution of one known element for another to achieve predictable
results. Id. at 4. The Examiner finds that McWilliam teaches a system that
certifies the authenticity of autographed collectable objects via a computer
readable storage medium that contains identifying information unique to a
collectable object and a hyperlink that can be activated to connect an owner
to a website where images and other information related to the collectable
object can be accessed by the owner. Id. at 4—5. The Examiner determines
it would have been obvious to include such an electronic link of McWilliam
on the non-volatile memory of DeFabio to provide a way to obtain further
information about the collectable object and verify its authenticity. Id. at 5.
Appellant argues that Rostampour is from a different field, and no
reason was provided for a skilled artisan to import Rostampour’s USB flash
drive into DeFabio’s system. Appeal Br. 9—10; Reply Br. 2.
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Appeal 2016-003949
Application 12/928,280
We agree with the Examiner that Rostampour is reasonably pertinent
to the problem addressed by Appellant. Ans. 2. The Examiner finds that
Rostampour teaches a variety of immutable solid-state memories including
USB flash. Final Act. 4. Indeed, Rostampour teaches a range of equivalent
solid-state and non-volatile storage devices such as CD-ROMs, DVDs, hard
drives, and zip disks. Rostampour 113. Rostampour also teaches that these
memories may be static or dynamic random access memory, flash memory,
EPROM, or any other solid-state memory known in the art. Id. ]Hf 13, 15.
These solid-state static memory devices address Appellant’s need to
provide digital images of the unique features of collectables by storing the
images on an associated data storage device to provide visual identification
and authentication. Spec. 1—2. Appellant chose a non-volatile data storage
device, such as a USB flash drive, which Appellant admits is well known, to
store data without using an on-board battery, so data can be stored for many
years without replacing a battery or damaging a collectable from a leaking
battery. Id. at 4. The problem addressed by Appellant is thus defined as
providing non-volatile data storage for accessing relevant data and images.
Appellant is correct that Rostampour relates to providing block data
access for an operating system using solid-state memory. Rostampour 11;
see Reply Br. 3. However, in the course of solving this issue, Rostampour
provides teachings regarding the many types of static (non-volatile) solid-
state memory that can be used including flash memory. The Examiner cites
this teaching as being reasonably pertinent to finding a suitable non-volatile
memory for storing data and images about collectables. This teaching also
provides a motivation for the Examiner’s substitution of a solid-state USB
flash drive of Rostampour for a CD or DVD of DeFabio. See Final Act. 4.
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Appeal 2016-003949
Application 12/928,280
Where a claim is directed to a structure that is known in the prior art
and is altered by the mere substitution of one element for another known in
the field, it must do more than yield a predictable result. In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012) (quoting KSR Int 7 Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007)). Appellant recognizes that flash memory is “well
known in the industry” as a type of non-volatile memory. See Spec. 4. The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results. KSR, 550 U.S.
at 416; see Western Union Co. v. Moneygram Payment Sys., Inc., 626 F.3d
1361, 1370 (Fed. Cir. 2010) (applying modem electronics to mechanical
devices and older electronics has become commonplace, and the use of an
electronic transaction device where the prior art used a fax machine was an
unpatentable improvement when such transition was commonplace in the
art). Appellant has not presented evidence of unexpected results. Instead,
Appellant discloses a USB flash drive as a well-known, non-volatile data
storage and uses it in the invention for its expected non-volatile memory and
compact size. Spec. 25. Rostampour thus provides motivation to substitute
USB flash memory for DeFabio’s CDs and DVDs by teaching these devices
as known, solid state, non-volatile memory devices. Rostampour || 13—15.
The Examiner’s rationale for substituting Rostampour’s USB flash
memory device for DeFabio’s CDs or DVDs as a simple substitution of one
well-known type of non-volatile memory for another to yield predictable
results also addresses Appellant’s hindsight argument. See In re Cree, 818
F.3d 694, 702, n.3 (Fed. Cir. 2016) (hindsight argument is of no moment
where the Examiner provides a sufficient, non-hindsight reason to combine
the references). Thus, we sustain the rejection of claims 10-15 and 17—20.
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Appeal 2016-003949
Application 12/928,280
Claim 16 Rejected Over
DeFabio, Rostampour, McWilliam, and Tank
Appellant argues that Tank does not overcome the deficiencies of
DeFabio, Rostampour, and McWilliam as to claim 10, from which claim 16
depends. Appeal Br. 10-11. Because we sustain the rejection of claim 10,
from which claim 16 depends indirectly, there are no deficiencies for Tank
to remedy in this regard, and we also sustain the rejection of claim 16.
Claims 1—9
In the Final Office Action, the Examiner states that claims 1—9 were
withdrawn and prosecution is closed for claims 1—9. Final Act. 2. Appellant
challenges the propriety of this withdrawal and argues that claim 2 has been
cancelled and its limitation “said non-volatile electronic data storage device
is a solid-state Flash Memory type data storage device” is incorporated into
claim 1, which should be allowable. Appeal Br. 11.3 This challenge is not
an appealable matter. It is properly raised in a petition to the Director. See
37 C.F.R. § 1.181(a)(1); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002).
Moreover, our affirmance of the rejection of claim 10 effectively
addresses the patentability of claim 1, which has similar scope to claim 10.4
3 Appellant’s belated challenge to our Decision (mailed March 18, 2015)
affirming the Examiner’s rejection of claims 1—9 (Appeal Br. 11—12) should
have been raised in a request for reconsideration. See 37 C.F.R. § 41.52.
4 Our Decision mailed March 18, 2015, entered a New Ground of Rejection
of claims 10—15 and 17—19 under 35 U.S.C. § 103(a) as being unpatentable
over DeFabio, Yu, and McWilliam. Appellant amended claims 1 and 10 to
include the subject matter of dependent claims 2 and 11 respectively and to
recite a solid-state flash memory type data storage device (claim 1) in a USB
format (claim 10). Amendment under 37 C.F.R. § 41.50(b) (filed April 2,
2015), at 6—7. The Examiner then rejected claims 10—15 and 17—20 as
unpatentable over DeFabio, Rostampour, and McWilliam. Final Act. 2—7.
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Appeal 2016-003949
Application 12/928,280
DECISION
We affirm the rejections of claims 10—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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