Ex parte OkajimaDownload PDFBoard of Patent Appeals and InterferencesDec 14, 200007871768 (B.P.A.I. Dec. 14, 2000) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board Paper No. 41 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte YOSHIO OKAJIMA _____________ Appeal No. 1998-1112 Application No. 07/871,768 ___________________ HEARD: May 3, 2000 ___________________ Before URYNOWICZ, THOMAS and LEVY, Administrative Patent Judges1. URYNOWICZ, Administrative Patent Judge. Decision on Appeal This appeal is from the final rejection of claims 1-15, all the claims pending in the application. The invention pertains to a portable electronic data entry and storage device. Claim 1 is illustrative and reads as follows: 1. A portable electronic data entry and storage device comprising: a RAM for storing data, a ROM for storing a transfer program for transferring at least part of the data stored in the RAM to an external device, 1 Eric Frahm, who heard the appeal in this case on May 3, 2000, has since resigned from the Board. Administrative Patent Judge Stuart Levy has been substituted for Mr. Frahm. In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985). Appeal No. 1998-1112 Application No. 07/871,768 2 a CPU for controlling the execution of the transfer program, a bus operated under control of the CPU for carrying the data stored in the RAM to the external device; a reset switch for initializing a system area in the RAM, wherein the CPU controls a detection process to detect a state of a prescribed terminal portion of the portable device when the reset switch is turned on and also determines whether or not the transfer program is to be executed based on the detected state, and wherein execution of the transfer program by the CPU causes data stored in the RAM to be applied via the bus to the external device. The references relied upon by the examiner as evidence of obviousness are: Engstrom et al. (Engstrom) 4,984,295 Jan. 08, 1991 Kelly 5,065,360 Nov. 12, 1991 The appealed claims stand rejected under 35 U.S.C. § 103 as being unpatentable over Engstrom in view of Kelly. The respective positions of the examiner and the appellant with regard to the propriety of these rejections are set forth in the examiner’s answer (Paper No. 33) and supplemental examiner’s answers (Paper Nos. 36 and 38) and the appellant’s brief (Paper No. 32), reply brief (Paper No. 35) and supplemental reply brief (Paper No. 37). Appellant’s Invention Appeal No. 1998-1112 Application No. 07/871,768 3 A personal organizer is illustrated in appellant’s Figure 1. When the reset switch 9 is turned on, CPU 1 detects a state of a prescribed terminal, e.g., whether an external device 8 is connected to the organizer at communications terminal 7. Upon detection of the state of the terminal, CPU 1 executes a program stored in ROM 2 for transferring the data in RAM 3 to the external device 8. As a result, data in RAM 3 can be transferred to the external device 8 without operation of the keypad 5 and regardless of the condition of the data in RAM 3 (error free or not). Thus, data stored in RAM 3 is not lost despite a fault in either keypad 5 or the RAM 3. The Prior Art Engstrom discloses a portable data entry and storage device such as radio 10. In Figure 6, the reference shows a RAM 37 for storing data from keypad 14. A program enable circuit 41 is connected to the microcomputer 35 by line 42 for selectively enabling and inhibiting programming of the RAM 37 via the computer 35. When switch 60 (Figure 5) is actuated, a high voltage is applied to line 42 to provide a program enable signal to the computer. Kelly teaches a ROM 30 for storing a transfer program for transferring at least part of the data stored in a RAM 32 to an Appeal No. 1998-1112 Application No. 07/871,768 4 external device 42. A bus 41 is operated under control of the CPU for transferring the data stored in the RAM to the external device. Opinion After consideration of the positions and arguments presented by both the examiner and the appellant, we have concluded that the rejection should not be sustained. In the answer, the examiner indicates, It would have been obvious to a person of ordinary skill in the art at the time the invention was made to utilize Kelly’s portable data storage and editing device as Engstrom’s programmable electronic device because this will allow for the editing and checking for correctness of a program or data prior to transferring it through a programming port to another computer. (page 5, lines 8-14) We are of the opinion that the incentive or suggestion set forth by the examiner supporting the combination of references is not valid. Engstrom, the main reference relied by the examiner, does not teach the transfer of programs from RAM 37 to an external device such as a computer. Rather, Engstrom is concerned with programming memory 37. Being a two-way radio, Engstrom’s unit transfers audio information, not programs, to an external device, that is, another radio. Accordingly, one of ordinary skill in the Appeal No. 1998-1112 Application No. 07/871,768 5 art would not have combined Kelly with Engstrom to allow for the editing and checking for the correctness of Engstrom’s program or data prior to transferring it through a programming port to another computer because Engstrom does not teach such a transfer2. REVERSED STANLEY M. URYNOWICZ JR. Administrative Patent Judge ) ) ) ) BOARD OF PATENT JAMES D. THOMAS ) APPEAL AND Administrative Patent Judge ) INTERFERENCES ) ) ) STUART S. LEVY ) Administrative Patent Judge ) 2 We note that the examiner has made no attempt to utilize Kelly as the main reference and Engstrom as the secondary reference to Appeal No. 1998-1112 Application No. 07/871,768 6 SU/RWK NIXON & VANDERHYE, P.C. 1100 NORTH GLEBE ROAD 8TH FLOOR ARLINGTON, VA 22201-4714 reject the claims as obvious under 35 U.S.C. § 103. Copy with citationCopy as parenthetical citation