Ex Parte Oba

Board of Patent Appeals and Interferences

Sep 28, 2011

11117326 (B.P.A.I. Sep. 28, 2011)

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.
11/117,326 04/29/2005 Kaori Oba NEC04061US 5501
21254 7590 09/28/2011
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
LOONAN, ERIC T
ART UNIT PAPER NUMBER
2189
MAIL DATE DELIVERY MODE
09/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KAORI OBA
____________________

Appeal 2009-010618
Application 11/117,326
Technology Center 2100
____________________

Before DEBRA K. STEPHENS, KRISTEN L. DROESCH, and
KALYAN K. DESHPANDE, Administrative Patent Judge

STEPHENS, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2009-010618
Application 11/117,326

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction
According to Appellant, the invention is a system and method for an
electronic control device and a data adjustment method for an electronic
control device enabling adjustment of control data, while executing control
of the controlled portion (Spec. 1, §1. Field of the Invention).

STATEMENT OF CASE
Exemplary Claims
Claims 1 and 12 are exemplary claims and are reproduced below:
1. An electronic control device, which executes an
adjustment processing to adjust control data to be appropriate
for an equipment to be controlled, said electronic control device
comprising:

a nonvolatile memory, having a plurality of data storage
areas;

a substitute memory, for use as a substitute for the
nonvolatile memory when executing the adjustment processing
of pre-adjustment control data, which comprises control data
prior to adjustment stored in a data storage area of the
nonvolatile memory; and

an adjustment processing portion, which reads the pre-
adjustment control data from at least one data storage area
among the plurality of data storage areas, executes adjustment
processing of the pre-adjustment control data using the
substitute memory, and writes adjusted control data, which
comprises control data subjected to the adjustment processing,
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to another data storage area in the nonvolatile memory which is
capable of writing independently of reading of the at least one
data storage.

12. An apparatus, comprising:

an electronic control device to control an operation of
said apparatus, said electronic control device comprising a
nonvolatile storage having a plurality of data storage areas such
that data can be read from one said data storage area while data
is being written to another of said data storage area.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pricer US 5,594,883 Jan. 14, 1997

REJECTIONS
Claims 1-13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Pricer. (Ans. 3-7.)

GROUPING OF CLAIMS

Appellant argues independent claims 1, 8 and 12 as a group on the
basis of claim 1 (App. Br. 6-8). The dependent claims are not separately
argued. We select claim 1 as the representative claim for claims 1-11 and
also select claim 12 as a representative claim for claims 12-13. We will,
therefore, treat claims 2-11 as standing or falling with representative claim 1
and claim 13 as standing or falling with claim 12.

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ISSUE
35 U.S.C. § 102(b): claims 1-13
Appellant argues their invention is not anticipated by Pricer since
Pricer is not directed to the problem of changing the control data of the
device, as clearly required in the independent claims (App. Br. 6).
Additionally, Appellant argues Pricer is not directed to modifying control
data for the device (App. Br. 7). Also, the Appellant contends Pricer does
not: (1) use the DASD (Direct Access Storage Device) for storage of control
data; (2) suggest using secondary memory as a substitute for the DASD or
portions thereof; and (3) suggest using substitute memory 16 as temporary
storage for control data stored in the DASD during update processing and
returns the updated, revised control data back into the DASD (id.).

In response, the Examiner initially maintains that “[i]n summary of
Appellant's arguments, all arguments may be considered moot in
consideration of Claim 12, since all arguments are directed toward changing
‘control data’ and Claim 12 does not have a ‘control data’ limitation” (Ans.
8). Further, the Examiner states that the Pricer reference is directed toward
changing data and the distinction between ‘“changing control data of the
device’ and ‘changing data’ is directed more toward a limitation of intended
use when examined in the context of the entire claim” (id.). The Examiner
further asserts that “all of applicant's claims fail to disclose a limitation that
limits the usage of the data” (Ans. 9). The Examiner then finds that Pricer
teaches the ‘“adjustment processing portion’ of appellant’s claim limitation
by reading data from memory, modifying the data, and writing the data back
into memory” (id.).
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Issue: Has the Examiner erred in finding that Pricer discloses “an
adjustment processing portion, which reads the pre-adjustment control data
from at least one data storage area among the plurality of data storage areas,
executes adjustment processing of the pre-adjustment control data using the
substitute memory, and writes adjusted control data, which comprises
control data subjected to the adjustment processing, to another data storage
area in the nonvolatile memory which is capable of writing independently of
reading of the at least one data storage” as recited in independent claim 1
and commensurately recited claim 8?

ANALYSIS
We agree with and adopt the Examiner’s findings and further
emphasize the following.
We agree with the Examiner that the “control data” is not used toward
any function but instead, is data stored and adjusted (Ans. 9). Specifically,
this limitation merely describes the informational content of data, and
therefore constitutes non-functional descriptive material as it does not
further limit the claimed invention functionally. Such non-functional
descriptive material does not patentably distinguish over prior art that
otherwise renders the claims unpatentable.1
Thus, Appellant’s arguments that Pricer does not disclose modifying
control data is unpersuasive. We are also not persuaded by Appellant’s
arguments that Pricer’s backup of data is different than “changing the
control data of a device while simultaneously operating the program that

1 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-89
(BPAI 2008) (precedential) (discussing cases pertaining to non-functional descriptive material).
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uses that control data” (App. Br. 7) as this limitation is not recited in the
claim.
Accordingly, Appellant has not shown the Examiner erred in finding
Pricer describes the invention as recited in independent claims 1 and 8 and
dependent claims 2-7 and 9-11 not separately argued. Therefore, Appellant
has not shown the Examiner erred in rejecting claims 1-11 under 35 U.S.C.
§102(b) for anticipation by Pricer.

Claims 12-13
Appellant’s arguments regarding claim 12 are misplaced (Reply Br. 2-
3). Specifically, the Examiner made rejections separately addressing each of
claims 1-13 in the Final Rejection (pgs. 2-6). In their Appeal Brief,
Appellant chose to argue only limitations recited in independent claim 1 and
not in the broader independent claim 12. Since Appellant’s arguments
regarding claim 1 are based on limitations not recited in claim 12, these
arguments are not relevant in analyzing the recited invention and the cited
prior art. Appellant presented no further arguments with respect to claim 12
in their Appeal Brief. We thus agree with the Examiner in concluding the
arguments presented are moot in light of the difference in the argued
limitations and the limitations recited in claim 12 (Ans. 8).
In the Reply Brief (8-9) Appellant, for the first time, present
arguments to distinguish claim 12 over Pricer. We find this argument to be
untimely. “Considering an argument advanced for the first time in a reply
brief . . . is not only unfair to an appellee but also entails the risk of an
improvident or ill-advised opinion on the legal issues tendered.” McBride v.
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Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986)
(internal citations omitted). “The failure to raise all issues and arguments
diligently, in a timely fashion, has consequences.” Ex parte Borden, 93
USPQ2d 1473, 1475 (BPAI 2010) (informative decision).
Accordingly, Appellant has not shown the Examiner erred in finding
Pricer describes the invention as recited in independent claim 12 and
dependent claim 13 not separately argued. Therefore, Appellant has not
shown the Examiner erred in rejecting claims 12 and 13 under 35 U.S.C.
§102(b) for anticipation by Pricer.

After considering the totality of the circumstances before us, we
conclude that the Examiner’s findings of anticipation with respect to claims
1-13 are not in error.

DECISION
The Examiner’s rejection of claims 1-13 under 35 U.S.C. § 102(b) as
being anticipated by Pricer is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

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AFFIRMED

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