Ex Parte Muraki

Patent Trial and Appeal Board

Feb 25, 2014

11941405 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YOSUKE MURAKI
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Appeal 2011- 008398
Application 11/941,405
Technology Center 2100
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-008398
Application 11/941,405

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STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-20. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
A. INVENTION
The invention at issue on appeal relates generally to a memory system
and more particularly to a removable nonvolatile memory system. (Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method for operating a removable nonvolatile
memory system comprising:
inserting a nonvolatile memory into an electronic system;
storing timing information onto a passive device coupled
with the nonvolatile memory;
extracting the nonvolatile memory from the electronic
system; and
enabling a read function from the nonvolatile memory
based on the timing information stored on the passive device.

C. REFERENCES
The Examiner relies on the following references as evidence:
Matsubara US 2002/0081097 Al Jun. 27, 2002
Isomura US 6,374,310 B2 Apr. 16, 2002
Marquot US 4,837,744 Jun. 6, 1989
Appeal 2011-008398
Application 11/941,405

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D. REJECTIONS
Claims 1-4 and 11-14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Matsubara, and further in view of Isomura.
Claims 5-10 and 15-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matsubara and further in view of Isomura, and
further in view of Marquot.

ANALYSIS
With respect to independent claims 1 and 11, we select independent
claim 1 as the representative claim for the grouping and will address
Appellant’s arguments thereto. Appellant’s main contentions are with
respect to the combination of the Matsubara and Isomura references.
Appellant contends that combining the Matsubara and Isomura
references would change the principle of operation of the Matsubara
reference. (App. Br. 10-12). The Examiner provides further detail regarding
the proposed combination. (Ans. 15-16). We find the Examiner’s proffered
combination and motivation to be reasonable.
Appellant has not filed a Reply Brief to further respond to the
Examiner’s additional reasonings.
Appellant further contends that the Matsubara reference teaches away
from Appellant’s invention. (App. Br. 12-13). Appellant contends that the
Matsubara reference “teaches that recording and playing are independent of
the apparatus and both are performed on the same apparatus.” (App. Br. 12).
Appellant relies upon in paragraph [0017] of the Specification to support the
contention that the same apparatus is used. We find no express limitations
in the language of independent claim 1 to support Appellant’s contention
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Application 11/941,405

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since no read function is expressly performed, but only enabling a read
function. Therefore, Appellant’s argument is not commensurate in scope
with the express language of independent claim 1 and does not evidence a
teaching away. As a result, Appellant’s argument does not show error in the
Examiner’s conclusion of obviousness.
Appellant further contends that (i) the Isomura reference teaches away
from Appellant’s invention (App. Br. 13-14), and (ii) Appellant’s invention
can render recorded data unreadable after a specified period of time without
requiring the monitoring of every removal of the memory device. (App. Br.
14). Appellant contends that since the Isomura reference tracks every
removal and determines whether it is unjust or not, the Isomura reference
teaches away since it leads in a direction divergent from Appellant. (App.
Br. 14). The Examiner maintains that the relied upon portion of the
Specification (¶ [0024]) more closely relates to dependent claim 2 for which
the Examiner has relied upon the Matsubara reference in the rejection. We
agree with the Examiner, and additionally agree with the Examiner that
“there is nothing in the appellant’s disclosure that forbids monitoring of
device removal,” and thereby, Isomura does not teach away. (Ans. 17).
Since Appellant’s arguments do not show error in the Examiner’s reasoned
combination, we sustain the rejection of representative independent claim 1,
and independent claim 11 grouped therewith, and dependent claims 2-4 and
12-14 not separately argued.
With respect to dependent claims 5-10 and 15-20, Appellant presents
separate arguments as to independent claim 6, which we address as follows.
Appellant maintains that the Marquot reference discusses inhibition using
clock signals, not timing signals stored on Marquot’s capacitors. (App. Br.
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16). The Examiner maintains that “the only way the circuit may discharge is
to have the clock signal represented within the capacitors. Therefore the
capacitors carry timing information as well.” (Ans. 18). We agree with the
Examiner.
Appellant maintains that the Examiner has not provided the requisite
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. (App. Br. 17). The Examiner provides the same
articulated reasoning for the combination as discussed with respect to
independent claim 1. We find Appellant’s generalized argument to not show
error in the proffered combination. Therefore, we sustain the rejection of
representative independent claim 6 and claims 5, 7-10, and 15- 20 not
separately argued.

CONCLUSION
For the aforementioned reasons, Appellant has not shown that the
Examiner erred in rejecting claims 1-20 based upon obviousness.

DECISION
We affirm the obviousness rejections of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED

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