Ex Parte ROST

Board of Patent Appeals and Interferences

Jan 22, 2003

08793984 (B.P.A.I. Jan. 22, 2003)

1 Both Appellant and Examiner should take note of the fact that claims
53-56 are presently dependent upon claim 52 which has been canceled.
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for publication and is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte IRMGARD ROST
____________
Appeal No. 2002-2128
Application No. 08/793,984
____________
HEARD: December 12, 2002
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Before RUGGIERO, BARRY, and SAADAT, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 43-51 and 53-84, which are all of the claims pending in the
present application. Claims 1-42 and 52 have been canceled.1 An
amendment filed April 27, 2001 after final rejection, which amended
claim 84, was approved for entry by the Examiner.
Appeal No. 2002-2128
Application No. 08/793,984
2
The disclosed invention relates to a personal data archive
system for transporting large quantities of data, such as medical
history data, from one application to another or from one service
provider to another. Included in the system are first and second
portable memory devices and at least one associated authorization
checking device. The first portable memory device, which stores
non-critical but frequently used data, is accessible independent of
the second portable memory device, which has a larger data storage
capacity and is used to store critical but less frequently used
data.
Claim 43 is illustrative of the invention and reads as
follows:
43. A personal data archive system comprising:
a first portable memory device containing personal data solely
of a single owner;
a second portable memory device of greater data storage
capacity than and differing from said first portable memory device,
said second portable memory device containing additional personal
data associated solely with said single owner, wherein said second
portable memory device is separate from said first portable memory
device, and a full set of personal data consists of data of the
single owner stored on said first and second portable memory
devices; and at least one authorization-checking device associated
with said first and second portable memory devices in order to
access data stored on each memory device wherein the authorization-
checking device can be enabled only as a function of a positive
authorization and authentication process; and
Appeal No. 2002-2128
Application No. 08/793,984
2 The Appeal Brief was filed August 9, 2001 (Paper No. 20). In response
to the Examiner’s Answer dated October 23, 2001 (Paper No. 21), a Reply Brief
was filed December 26, 2001 (Paper No. 22), which was acknowledged and entered
by the Examiner as indicated in the communication dated February 12, 2002
(Paper No. 23).
3
wherein the first portable memory device is accessible
independent of the second memory device, and the full set of
unique, personal data belonging to a single owner is accessible
only when the first portable memory device is used in combination
with the second portable memory device and only after a positive
authorization and authentication process is performed through said
authorization checking device.
The Examiner relies on the following prior art reference:
Watanabe 4,709,136 Nov. 24, 1987
Claims 43-51 and 53-84 stand finally rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Watanabe.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs2 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal, the
rejection advanced by the Examiner, the arguments in support of the
rejection and the evidence of obviousness relied upon by the
Examiner as support for the rejection. We have, likewise, reviewed
and taken into consideration, in reaching our decision, Appellant’s
arguments set forth in the Briefs along with the Examiner’s
Appeal No. 2002-2128
Application No. 08/793,984
4
rationale in support of the rejection and arguments in rebuttal set
forth in the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill in
the art the invention as set forth in claims 43-51 and 53-84.
Accordingly, we reverse.
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 43 and 84 based on Watanabe, Appellant asserts
that the Examiner has failed to establish a prima facie case of
obviousness since all of the limitations of claims 43 and 84 are
not taught or suggested by the applied Watanabe reference. In
particular, Appellant contends (Brief, page 8; Reply Brief, pages 5
and 6) that Watanabe does not provide for the accessibility of a
first memory device independent from a second memory device, a
feature present in each of the independent claims 43 and 84.
After careful review of the Watanabe reference, in light of
the arguments of record, we are in general agreement with
Appellant’s position as stated in the Briefs. Although the
Examiner (Answer, page 7) points to the background discussion at
column 1, lines 58-67 of Watanabe, which makes reference to
existing personal data archive systems with independently
Appeal No. 2002-2128
Application No. 08/793,984
5
accessible memory cards, the bulk of the disclosure of Watanabe is
directed to solving security problems attendant to systems with
independently accessible memory cards. It is apparent from a
reading of Watanabe that Watanabe’s solution to the access security
problem, in direct contrast to Appellant’s claimed independent
access feature, is to require that a first memory card can not be
accessed without the presence and authorization of a second memory
card. A prior art reference must be considered in its entirety,
i.e., as a whole, including portions that would lead away from the
claimed invention. See W.L. Gore & Associates, Inc. V. Garlock,
Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 311 (Fed. Cir. 1983), cert
denied, 469 U.S. 851 (1984). Given the deficiencies in the
disclosure of Watanabe, it is our view that any suggestion to
modify Watanabe to arrive at Appellant’s claimed invention could
not come from any teaching in Watanabe but, rather, only from
Appellant’s own disclosure.
We are further of the view that even assuming, arguendo, the
existence of personal data archive systems with memory devices
having independent accessibility, there is no indication from the
Examiner as to how and in what manner the Watanabe reference would
be modified to arrive at the particulars of Appellant’s invention
as set forth in independent claims 43 and 84. In order for us to
Appeal No. 2002-2128
Application No. 08/793,984
6
sustain the Examiner’s rejection under 35 U.S.C. § 103, we would
need to resort to impermissible speculation or unfounded
assumptions or rationales to supply deficiencies in the factual
basis of the rejection before us. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968), rehearing denied, 390 U.S. 1000 (1968).
In view of the above discussion, it is our view that, since
all of the limitations of the appealed claims are not taught or
suggested by the applied prior art Watanabe reference, the Examiner
has not established a prima facie case of obviousness.
Accordingly, the 35 U.S.C. § 103(a) rejection of independent claim
43 and its dependent claims 44-51 and 53-83, as well as independent
claim 84, is not sustained.
In conclusion, we have not sustained the Examiner’s 35 U.S.C.
§ 103(a) rejection of any of the claims on appeal. Therefore, the
decision of the Examiner rejecting claims 43-51 and 53-84 is
reversed.
Appeal No. 2002-2128
Application No. 08/793,984
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REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JFR/lp
Appeal No. 2002-2128
Application No. 08/793,984
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