Ex parte Okajima

Board of Patent Appeals and Interferences

Dec 14, 2000

07871768 (B.P.A.I. Dec. 14, 2000)

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not written for publication and is not binding precedent of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.