Ex Parte Narendra et al

Patent Trial and Appeal Board

Feb 23, 2017

12002317 (P.T.A.B. Feb. 23, 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.
12/002,317 12/14/2007 Siva G. Narendra 115.020US1 5862
35781 7590
Tyfone, Inc.
Patent Dept.
5331 SW Macadam Avenue
Suite 251
Portland, OR 97239
EXAMINER
DINH, TUAN T
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
02/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
tlippara@gmail.com
dana. lemoine @tyfone.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIVA G. NARENDRA,
PRABHARKAR TADEPALLI, and THOMAS N. SPITZER
Appeal 2016-001940
Application 12/002,3171
Technology Center 2800
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1 and 3—5.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Tyfone, Inc. Br. 1.
2 Claims 2 and 6—25 have been cancelled. See Br. 2, 5.
Appeal 2016-001940
Application 12/002,317
Invention
The claims are directed to a memory card which includes radio
circuitry for transmitting signals. Abstract.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. A memory card token comprising:
a host interface that allows the memory card token to be
accepted in a memory card slot;
a radio circuit to transmit signals; and
a controller coupled between the host interface and the
radio circuit, wherein the controller is configured to determine if
memory card compatible commands received over the host
interface are meant to enable and disable the radio circuit in
response to the memory card compatible commands.
Applied Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Park US 2005/0224589 A1 Oct. 13, 2005
REJECTION
The Examiner made the following rejection:
Claims 1 and 3—5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Park. Final Act. 2—3.
2
Appeal 2016-001940
Application 12/002,317
ANALYSIS
Appellants contend the Examiner erred in finding Park discloses a
“controller is configured to determine if memory card compatible commands
received over the host interface are meant to enable and disable the radio
circuit in response to the memory card compatible commands,” as recited in
claim 1. Br. 3^4. Specifically, Appellants argue the “Examiner errledl by
failing to give patentable weight to [the controller being] ‘configured
to’ . . . determine if commands received are meant to enable and disable a
radio circuit” and, accordingly, “[w]hen the claim limitations that recite
‘configured to’ are given their proper patentable weight. . . [Park] fails to
teach the claimed subject matter.” Id.
The Examiner notes initially that “[i]t has been held that the recitation
that an element is ‘configured to’ perform a function is not a positive
limitation but only requires the ability to so perform. It does not constitute a
limitation in any patentable sense.” Final Act. 2 (citing In re Hutchison, 154
F.2d 135 (CCPA 1946)). To the extent that the Examiner construes the
above-recited limitations from claim 1 such that they do not constitute a
limitation in “any patentable sense,” we disagree with the Examiner. In
Hutchison, the claim at issue included the phrase “adapted for” in the
preamble. Hutchison, 154 F.2d at 137. In the claims involved in this appeal,
however, the phrase “configured to” is not located in the preamble of the
claims. Rather, the phrase “configured to” is located in the body of the
claims and limits a structural component of the claims, i.e., the recited
controller. Accordingly, in our view, the holding in Hutchison does not
apply to the claims involved in this appeal in the manner noted by the
Examiner. Moreover, the limitation expressly recites a function, i.e.,
3
Appeal 2016-001940
Application 12/002,317
“determining] if commands are meant to enable and disable the radio
circuit,” which is performed by a specific structure, i.e., “the controller,” and
accordingly must be given patentable weight.
The Examiner finds Park discloses a memory card including a
controller and a radio circuit. Final Act. 2—3 (citing Park | 33, Fig. 1); Ans.
2. The Examiner further finds that Park’s controller receives “input/output
data or signals, for example DAT1—DAT3, CFK, GND, VDD,” for
controlling the memory card. Ans. 3 (citing Park 136)3; Final Act. 3.
The portions of Park cited by the Examiner, however, are silent as to
how the controller 130 determines if the received input/output signals,
DAT1—DAT3, CFK, GND, VDD, are meant to enable and disable the
memory card’s radio circuit. See Park Fig. 1, || 33, 36. Further, the
Examiner has not explained how Park’s controller is configured to
determine if the received input/output signals are meant to enable and
disable the memory card’s radio circuit, nor has the Examiner explained why
the controller would inherently be configured to determine if the received
input/output signal are meant to enable and disable the radio circuit using the
input/output signals. See Ans. 2—3; see also Final Act. 2—3. Accordingly,
on this record, we are constrained to reverse the Examiner’s § 102 rejection
of independent claim 14 and claims 3—5 which depend directly or indirectly
from claim 1.
3 The Examiner’s Answer cites paragraph 136 of Park; however, this citation
appears to be a typographical error because Park does not include paragraph
136. We presume the Examiner meant to cite paragraph 36 of Park because
that paragraph includes the subject matter the Examiner discusses.
4 In the event of further prosecution, the Examiner should consider whether
Appellants’ Specification as originally filed provides written description
support under 35U.S.C. § 112, first paragraph, regarding commands to
4
Appeal 2016-001940
Application 12/002,317
DECISION
We REVERSE the Examiner’s rejection of claims 1 and 3—5.
REVERSED
enable and disable the radio circuit. We note the Specification provides
examples which enable or disable an antenna connected to a radio circuit,
but not enabling or disabling the radio circuit itself. See Spec. 6—7.
5