Ex Parte Medin et al

Board of Patent Appeals and Interferences

Dec 17, 2003

09589434 (B.P.A.I. Dec. 17, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID T. MEDIN, TODD A. HERMANSON, AND SCOTT L. KAYSER
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Appeal No. 2002-0540
Application No. 09/589,434
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ON BRIEF
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Before HAIRSTON, DIXON, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1-15, 17-20, and 22. The appellants appeal
therefrom under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The invention at issue on appeal is used to add memory to "industrial personal
computers." (Spec. at 1.) According to the appellants, rows of industrial personal
computers ("PCS") are stored in racks. Each row includes multiple PCS; "the PCS are
coupled to wiring associated with the rack and other equipment. . . ." (Id. at 5.)
Appeal No. 2002-0540 Page 2
Application No. 09/589,434
A compact flash memory can be coupled to a PC via an expansion slot of the
PC. Using such slot, assert the appellants, however, "reduces the overall versatility of
the PC." (Id. at 2.)
In contrast, the appellants explain that their invention expands "non-volatile
memory for an industrial PC without the need for consuming a valuable planar
expansion slot." (Appeal Br. at 8.) An understanding of the invention can be achieved
by reading the following claim.
18. A PC comprising:
backplane means for distributing signals in said PC to expansion
cards; and,
means for receiving a compact flash expansion card, coupled to
said backplane means.
Claims 1, 18-19, and 22 stand rejected under 35 U.S.C. § 102(b) as anticipated
by U.S. Patent No. 5,694,291 ("Feightner"). Claims 2-15, 17, and 20 stand rejected
under 35 U.S.C. § 103(a) as obvious over Feightner and U.S. Patent No. 3,755,771
("Brush").
Appeal No. 2002-0540 Page 3
Application No. 09/589,434
OPINION
Rather than reiterate the positions of the examiner or the appellants in toto, we
address the point of contention therebetween. The examiner asserts, "Feightner
teaches . . . a plurality of expansion slots (34, fig. 2) inherently capable of receiving
compact flash expansion cards. . . ." (Examiner's Answer at 3.) The appellants argue,
"[i]t is improper and in error for the Examiner to . . . equate a standard expansion slot to
a compact flash slot. " (Appeal Br. at 6.) In addressing the point of contention, the
Board conducts a two-step analysis. First, we construe the claims to determine their
scope. Second, we determine whether the construed claims are anticipated or would
have been obvious.
1. CLAIM CONSTRUCTION
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). "Claims are not interpreted in a vacuum, but are part of and are read in light
of the specification." Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116, 1
USPQ2d 1563, 1566 (Fed. Cir. 1987) (citing Hybritech Inc. v. Monoclonal Anti-bodies,
Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94-95 (Fed. Cir. 1986); In re Mattison, 509
F.2d 563, 565, 184 USPQ 484, 486 (CCPA 1975)).
Appeal No. 2002-0540 Page 4
Application No. 09/589,434
Here, independent claim 1 recites in pertinent part the following limitations:
"a compact flash expansion slot coupled to said planar member, so that a compact
flash memory expansion card can be coupled to the PC without using one of the planar
expansion card slots." The appellants' specification defines the "[c]ompact flash
expansion slot" as "any slot or connector which is compliant with the industry standard
CF+ types I or II slot, as defined by the compact flash CF+ specification maintained by
the Compact Flash Association of Palo Alto, California." (Spec. at 5-6.)
For its part, independent claim 18 recites in pertinent part the following
limitations: "means for receiving a compact flash expansion card. . . ." The appellants'
specification defines the "compact flash expansion card" as "any expansion card,
whether it is a memory card, disk drive, or any other device which is designed for use
with and compliant with the industry standard CF+ types I or 11 slot, as defined by the
compact flash CF+ specification maintained by the Compact Flash Association of Palo
Alto, California." (Id.) "Examples of such expansion cards include memory cards
(which are usable in various devices, such as Windows CE handheld computers, digital
cameras, PCMCIA adapters for laptop computers, etc.)" (Id.) Independent claim 8
recites "a compact flash expansion card slot for receiving a compact flash expansion
card therein."
Appeal No. 2002-0540 Page 5
Application No. 09/589,434
Reading "compact flash expansion slot" and "compact flash expansion card" in
light of the specification, claims 1 and 18 require an expansion slot and an expansion
slot, respectively, that complies with the industry standard CF+ types I or II slot defined
by the compact flash CF+ specification maintained by the Compact Flash Association of
Palo Alto, California. Claim 8 requires an expansion slot and an expansion card that
both comply with the industry standard CF+ types I or II slot defined by the same
specification of the same Association.

2. ANTICIPATION AND OBVIOUSNESS DETERMINATIONS
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). "To
establish inherency, the extrinsic evidence 'must make clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.'" In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (quoting Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991)) "Inherency . . .
may not be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re Oelrich, 666
Appeal No. 2002-0540 Page 6
Application No. 09/589,434
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) (citing Hansgirg v. Kemmer, 102 F.2d
212, 214, 40 USPQ 665, 667 (1939)).
Here, the examiner equates the claimed "compact flash expansion slot" to
"Feightner['s] . . . slots (34, fig. 2). . . ." (Examiner's Answer at 3.) He alleges that these
slots 34 are "inherently capable of receiving compact flash expansion cards. . . ." (Id.
(emphasis added).) For its part, the reference describes these slots as "main memory
slots 34," col. 3, l. 18, of a "Baby-AT motherboard 14. . . ." Id. at ll. 15. We find no
evidence that an expansion card that complies with the industry standard CF+ types I or
II slot defined by the compact flash CF+ specification maintained by the Compact Flash
Association of Palo Alto, California, however, is necessarily inserted in any of
Feightner's main memory slots 34. To the contrary, we agree with the appellants that
"[t]he Feightner reference does not . . . mention compact flash [n]or suggest the
desirability of having an expansion slot which is compliant with the CF+ specification for
compact flash memory." (Appeal Br. at 6.) Therefore, we reverse the anticipation
rejection of claim 1, of claim 18, and of claims 19 and 22, which depend from claim 18.
"In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443,
Appeal No. 2002-0540 Page 7
Application No. 09/589,434
1In an ex parte appeal, "the Board is basically a board of review — we review . . .
rejections made by patent examiners." Ex parte Gambogi, 62 USPQ2d 1209, 1211
(Bd.Pat.App. & Int. 2001). Here, our review was limited to the examiner's application of
Feightner and Bush. Our reversal should not be construed to imply that no reference
could cure the deficiency of Feightner.
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would . . . have suggested the
claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781,
783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, the examiner does not allege, let alone show, that the addition of Brush
cures the aforementioned deficiency of Feightner.1 Therefore, we reverse the
obviousness rejection of claims 2-7, which depend from claim 1; of claim 8; and of
claims 9-15 and 17, which depend from claim 8.
CONCLUSION
In summary, the rejection of claims 1, 18, 19, and 22 under § 102(b) is reversed.
The rejection of claims 2-15 and 17 under § 103(a) is reversed.
Appeal No. 2002-0540 Page 8
Application No. 09/589,434
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2002-0540 Page 9
Application No. 09/589,434
SIMMONS, PERRINE, ALBRIGHT & ELLWOOD, P.L.C.
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