Sensors Unlimited, Inc.

Patent Trials and Appeals Board

Jun 10, 2021

2020002242 (P.T.A.B. Jun. 10, 2021)

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.
15/424,502 02/03/2017 Andrew Eckhardt 96586US01
[1510801.703-1]
7962
61654 7590 06/10/2021
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
LOONAN, ERIC T
ART UNIT PAPER NUMBER
2137
NOTIFICATION DATE DELIVERY MODE
06/10/2021 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW ECKHARDT and JINGUO YU
____________

Appeal 2020-002242
Application 15/424,502
Technology Center 2100
____________

Before KARL D. EASTHOM, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 5–11, and 13–15, which constitute all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sensors
Unlimited Inc. Appeal Br. 2.
Appeal 2020-002242
Application 15/424,502
2
THE INVENTION
The disclosed and claimed invention generally “relates to data storage,
more specifically to media recording systems (e.g., for digital cameras).”
Spec. 1.2
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising:
writing sample data from a media recording device to a
digital memory card, wherein the sample data includes
predetermined characteristics;
determining a length of write time to write the sample data
to the digital memory card;
calculating actual write speed internal to the digital
memory card and thus between the media recording device and
the digital memory card; and
adjusting a data compression dynamically to maintain a
data transfer rate that does not exceed the calculated actual write
speed between the media recording device and the digital
memory card.

2 We refer to the Specification filed Feb. 3, 2017 (“Spec.”); Final Office
Action mailed Jan. 7, 2019 (“Final Act.”); Appeal Brief filed July 18, 2019
(“Appeal Br.”); Examiner’s Answer mailed Nov. 25, 2019 (“Ans.”); and the
Reply Brief filed Jan. 27, 2020 (“Reply Br.”).
Appeal 2020-002242
Application 15/424,502
3
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Name Reference Date
Iijima US 2006/0109754 A1 May 25, 2006
Maeda et al.
(“Maeda”)
US 2007/0183179 A1 Aug. 9, 2007
Nakanishi et al.
(“Nakanishi”)
US 2010/0023678 A1 Jan. 28, 2010
MacInnis US 2010/0278271 A1 Nov. 4, 2010

REJECTIONS
Claims 1–3, 5–11, and 13–15 stand rejected under 35 U.S.C. § 112(a)
as failing to comply with the written-description requirement. Final Act. 3.
Claims 1–3, 5–11, and 13–15 stand rejected under 35 U.S.C. § 112(b)
as indefinite. Final Act. 4.
Claims 1, 2, 5–7, 10, and 13–15 stand rejected under 35 U.S.C. § 103
as unpatentable over Maeda and MacInnis. Final Act. 5.
Claims 3 and 11 stand rejected under 35 U.S.C. § 103 as unpatentable
over Maeda, MacInnis, and Iijima. Final Act. 7.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as unpatentable
over Maeda, MacInnis, and Nakanishi. Final Act. 8.
ANALYSIS
Section 112 Rejections
§ 112(a) Rejection – Written Description
The Examiner finds that the claimed “calculating actual write speed
internal to the digital memory card” lacks support in the Specification. Final
Act. 3. Specifically, the Examiner finds that “presenting data ‘to’ a card . . .
Appeal 2020-002242
Application 15/424,502
4
is not the same as data being ‘internal’ of the card.” Ans. 4. The Examiner
also finds that the Specification’s description of “the calculation of a write
speed between a media recording device and a digital memory card” does
not support “calculation of a write speed ‘internal’ to a digital memory card”
because “the space separating two objects is not the same as any point
internal to a digital memory card.” Final Act. 3; see also Ans. 3.
Appellant argues that the Specification “refers to the calculated actual
write speed ‘between’ the recording device and the digital memory card”
which “clearly means the actual write speed of the card (i.e., internal to the
card).” Appeal Br. 5; see also Reply Br. 2. Appellant further argues that the
Examiner “ignores the express disclosure that ‘embodiments allow
determining the actual write speed capability of a digital memory card (e.g.,
an SD card) as opposed to its advertised rating and present condition.’” Id.
(citing Spec. 8). According to Appellant, “data written ‘to’ a data medium is
being written on the data medium, which is the same as saying it is being
written ‘internal’ to the data medium.” Reply Br. 2.
We are not persuaded by Appellant’s arguments. To satisfy the
written-description requirement, a patent specification must describe the
claimed invention in sufficient detail that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed
invention. See, e.g., Moba, B.V. v. Diamond Auto., Inc., 325 F.3d 1306,
1319 (Fed. Cir. 2003); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991). “[T]he test requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art,” where “the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
Appeal 2020-002242
Application 15/424,502
5
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The exact level of detail
required depends upon “the nature and scope of the claims and on the
complexity and predictability of the relevant technology.” Id. Factors for
“evaluating the adequacy of the disclosure” may include “the existing
knowledge in the particular field, the extent and content of the prior art, the
maturity of the science or technology, [and] the predictability of the aspect at
issue.” Id. (alteration in original) (quoting Capon v. Eshhar, 418 F.3d 1349,
1359 (Fed. Cir. 2005)).
Here, the Specification describes “determining the actual write speed
capability of a digital memory card (e.g., an SD card) as opposed to its
advertised rating and present condition.” Spec. 8, ll. 14–15 (emphasis
added). The Specification also describes that “the length of time required to
write the data is taken and used to calculate actual writing speed.” Id. at 8,
ll. 18–19. The Specification explains “perform[ing] a timed write of known
data such as compressed video images to the SD card.” Id. at 8, ll. 9–10
(emphasis added).
We agree with the Examiner that discussion in the Specification only
describes determining the “actual write speed capability of a digital memory
card” and writing “to the [digital memory] card,” but provides no support for
a write speed that is “internal to the digital memory card.”
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112(a) rejection
of claims 1–3, 5–11, and 13–15.
§ 112(b) Rejection – Indefiniteness
Claim 1 recites “calculating actual write speed internal to the digital
memory card and thus between the media recording device and the digital
memory card.” (emphasis added). The Examiner concludes that this
limitation is indefinite. Final Act. 4. Specifically, the Examiner concludes
Appeal 2020-002242
Application 15/424,502
6
that the claimed “between the media recording device and the digital
memory card” defines “[t]he space separating a device and a card,” which is
“different from any point ‘internal’ to the card.” Id. The Examiner also
finds that “a ‘speed’ may be calculated by measuring a quantity of data and
time from one point to another point (e.g., between a device and card),”
which makes an internal speed, as claimed, indefinite. Id.; see Ans. 5.
Appellant argues that “the write speed of the card itself is what is
being calculated, and whether the term ‘internal to the digital memory card’
is included in the claim language is irrelevant to the meaning of the claims.”
Appeal Br. 6. Appellant further argues that “the write speed ‘between’ the
recording device and the digital memory card is limited by only the actual
write speed capability of the digital memory card, and that the calculated
write speed must be the actual write speed of the digital memory card.” Id.;
see Reply Br. 4.
We are not persuaded by Appellant’s arguments. “A claim is
indefinite if, when read in light of the specification, it does not reasonably
apprise those skilled in the art of the scope of the invention.” Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). “As
the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates,
claims are required to be cast in clear—as opposed to ambiguous, vague,
indefinite—terms. It is the claims that notify the public of what is within the
protections of the patent, and what is not.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014) (alterations in original).
The claim language presents an internal inconsistency by requiring
“calculating actual write speed” that is both “internal to the digital memory
card” and “between the media recording device and the digital memory
card.” The Specification describes “perform[ing] a timed write of known
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Application 15/424,502
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data such as compressed video images to the SD card.” Spec. 8, ll. 9–10
(emphasis added). The Specification further describes “determining the
actual write speed capability of a digital memory card (e.g., an SD card).”
Id. at 8, ll. 14–15 (emphasis added).
This disclosure in the Specification supports the write speed being “of
a digital memory card” and for data written “to the [digital memory] card,”
but does not support that the write speed is “internal to the digital memory
card.” Appellant does not sufficiently explain why the claimed write speed
“internal to the digital memory card and thus between the media recording
device and the digital memory card” would be clearly referenced by the
write speed “of the digital memory card.” We agree with the Examiner that
the claim, based on the claim language (i.e., write speed being “internal to
the digital memory card” and “between the media recording device and the
digital memory card”) and in light of the Specification (i.e., write speed
being “of the digital memory card” and for data written “to the [digital
memory] card”), is not clear.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112(b) rejection
of claims 1–3, 5–11, and 13–15.
Section 103 Rejections
Claim 1 recites “adjusting a data compression dynamically to
maintain a data transfer rate that does not exceed the calculated actual write
speed between the media recording device and the digital memory card.”
The Examiner finds that MacInnis’s adjusting bit rate teaches the
disputed limitation. Final Act. 5 (citing MacInnis ¶¶ 22–23). The Examiner
relies on Maeda’s calculating the access rate value to each calculating the
actual write speed as claimed. Id. (citing Maeda ¶ 114).
Appeal 2020-002242
Application 15/424,502
8
Appellant argues that the cited portions of MacInnis “only relate to
wireless data communication between a device and display, and do not relate
an actual write speed of a storage device” or “adjust[ing] compression based
on the actual write speed of a storage device.” Appeal Br. 6–7. Appellant
also argues that “while MacInnis may disclose possibly compressing data for
the purposes of wireless transmission, it appears to have no logical
connection to the claimed invention.” Id. at 8.
We are not persuaded by Appellant’s argument that the Examiner
erred. As cited by the Examiner, MacInnis discloses “determin[ing] an
appropriate transmission bit rate for wireless transmissions” that “may
comprise a bit rate that can be supported on the wireless link.” MacInnis
¶ 22. MacInnis further discloses “adjust[ing] bit rates . . . depending on
conditions in the wireless link” by “changing one or more of compression
and/or scaling functions [and] compression parameters.” Id. ¶ 23. In other
words, MacInnis teaches adjusting compression and maintaining a bit rate
that can be supported. As further cited by the Examiner, Maeda discloses
“calculating access rate values.” Maeda ¶ 114.
Appellant fails to persuasively explain why MacInnis’s adjusting
compression and maintaining a supported bit rate (or otherwise not
exceeding a supported bit rate) does not teach or suggest the claimed
adjusting a data compression and maintaining a rate that does not exceed
another rate. Appellant also fails to persuasively explain why MacInnis’s
adjusting compression and maintaining a rate below another rate, combined
with Maeda’s calculated write speed, does not teach adjusting a compression
speed to maintain a rate below a calculated write speed, as claimed.
Appellant also argues that “MacInnis is clearly not analogous to the
claimed invention.” Appeal Br. 8. However, Appellant’s argument does not
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Application 15/424,502
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address the Examiner’s findings. Specifically, the Examiner finds that
Maeda and MacInnis are both directed to “data transmission systems,” and
that it would have been obvious to “modify the bit rate of Maeda to include
bit rate adjustments as taught by MacInnis” in order “to save energy.” Final
Act. 5–6 (citing MacInnis ¶ 22). As Appellant’s argument is conclusory and
without explanation, we are not persuaded that the Examiner erred.
Accordingly, we sustain the Examiner’s § 103 rejection of claim 1,
along with the rejection of claim 10, which recites commensurate
limitations, and the rejections of dependent claims 2, 3, 5–9, 11, and 13–15,
not separately argued. See Appeal Br. 8–9.
CONCLUSION
We affirm the Examiner’s § 112(a) rejection of claims 1–3, 5–11, and
13–15.
We affirm the Examiner’s § 112(b) rejection of claims 1–3, 5–11, and
13–15.
We affirm the Examiner’s § 103 rejections of claims 1–3, 5–11, and
13–15.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/
Basis
Affirmed Reversed
1–3, 5–11,
13–15
112(a) Written
Description
1–3, 5–11,
13–15

1–3, 5–11,
13–15
112(b) Indefiniteness 1–3, 5–11,
13–15

1, 2, 5–7,
10, 13–15
103 Maeda,
MacInnis
1, 2, 5–7,
10, 13–15

Appeal 2020-002242
Application 15/424,502
10
Claims
Rejected
35 U.S.C.
§
References/
Basis
Affirmed Reversed
3, 11 103 Maeda,
MacInnis,
Iijima
3, 11
8, 9 103 Maeda,
MacInnis,
Nakanishi
8, 9
Overall
Outcome
1–3, 5–11,
13–15

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

AFFIRMED