Ex Parte Seal et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201310949603 (P.T.A.B. Feb. 27, 2013) Copy Citation 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. 10/949,603 09/24/2004 Brian K. Seal OCO-44-CIP 3301 22827 7590 02/27/2013 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER WU, DANIEL J ART UNIT PAPER NUMBER 2681 MAIL DATE DELIVERY MODE 02/27/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN K. SEAL, ERIC NORROD and STEPHEN M. SIMMONS ____________ Appeal 2010-008060 Application 10/949,603 Technology Center 2600 ____________ Before KRISTEN L. DROESCH, HUNG H. BUI and BARBARA A. PARVIS, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008060 Application 10/949,603 2 STATEMENT OF THE CASE The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 17-20. 1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The Appellants’ disclosed invention is related to a method of using flash memory for the storage of metering data. Spec. 1. Independent claim 17 is illustrative and is reproduced below: 17. A method for storing and updating meter data, comprising the following steps: providing a plurality of memory structures, wherein said plurality of memory structures includes at least one multi- segmented flash memory structure and at least one associated memory structure; obtaining meter data representative of one or more parameters associated with a utility product or service; copying previously obtained meter data stored in at least one selected segment of said at least one multi-segmented flash memory structure into said at least one associated memory structure; updating with obtained meter data selected data within said at least one associated memory structure; erasing the at least one selected segment of said at least one multi-segmented flash memory structure from which data was transferred in said copying step; and rewriting the updated selected data from said at least one associated memory structure to said at least one selected segment of said at least one multi-segmented flash memory structure. 1 Claims 1-16 have been cancelled. Appeal 2010-008060 Application 10/949,603 3 Rejection Claims 17-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cain (U.S. 6,219,656 B1), Patel (U.S. 4,327,410) and the Appellants’ admitted prior art. ISSUES Did the Examiner err in determining that the invention recited in claim 17 would have been obvious over the applied prior art on the following bases: (1) the modification of Cain in view of Patel would render Cain unsatisfactory for its intended purpose; (2) Cain teaches away from the claimed subject matter; and (3) the Examiner improperly relies on hindsight bias? Did the Examiner err in determining that the invention recited in claim 18 would have been obvious over the applied prior art on the following bases: (1) the Examiner’s findings are unsupported in the prior art and contrary to the subject matter of the Appellants’ application; and (2) the Examiner’s rationale does not rise to the standard of “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”? ANALYSIS We have reviewed the Examiner’s rejection in light of the Appellants’ arguments in the Appeal Brief presented in response to the Final Office Action (“FOA”) and the Reply Brief presented in response to the Examiner’s Answer. We disagree with the Appellants’ conclusions and highlight and address specific findings and arguments for emphasis as follows. Appeal 2010-008060 Application 10/949,603 4 Claims 17, 19 and 20 The Appellants first argue that the proposed modification of Cain with the teachings of Patel would render Cain unsatisfactory for its intended purpose. App. Br. 6-8. The Appellants’ arguments focus on Cain’s purpose of maintaining data in the event of a power failure without having to detect a power fail signal to provide warning of an impending power failure. App. Br. 6-7. The Appellants assert that Patel explicitly requires the provision of a power fail detection signal to preserve metering data in the event of a power outage. App. Br. 7-8. The Appellants further argue that one with ordinary skill in the art would have been lead away from Patel’s power fail signal method due to the criticism of such power fail detection systems described in Cain. App. Br. 8 (citing in re Grasselli, 713 F.2d 731, 743 (Fed. Cir 1983)); Reply Br. 3. The Appellants’ arguments are misplaced and unpersuasive. The Examiner does not propose combining the teachings of Cain with the teachings of Patel to include Patel’s power fail signal detection method. Instead, the Examiner relies on Patel for teaching the steps of copying data, erasing data and rewriting with updated data. Ans. 5 (citing Patel col. 4, ll. 29-35, 45-50). The Appellants further argue that the Examiner improperly relies on Cain’s description of a conventional solution to the problem of losing accumulated data in an electrical measuring device with an electrically powered data register in the event of a power outage (“conventional part”) while ignoring Cain’s explicit teaching related to removing the need for a power failure warning (“improvement part”). Reply Br. 2-3. The Appellants assert that the Examiner’s analysis is improper because the prior art Appeal 2010-008060 Application 10/949,603 5 references must be considered in their entirety, including portions that would lead away from the claimed invention. Reply Br. 2 (citing W.L. Gore & Assoc. v. Garlock, 721 F.2d 1540 (Fed. Cir. 1983). We are unpersuaded by the Appellant’s arguments. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned, They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983), citing In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968). Furthermore, the Appellants have not sufficiently explained how Cain’s teachings would lead away from the claimed invention since claim 17 does not include limitations related to power failure detection, or avoidance of power failure detection. The Appellants further argue that Cain teaches away from the claimed subject matter. App. Br. 8-11; Reply Br. 4. Specifically, the Appellants argue that “the methodology of claim 17 only updates information at one of the plurality of memory structures, namely the associated memory structure,” while “Cain explicitly teaches and encourages one of ordinary skill in the art to provide meter data and update information to more than one memory structure.” App. Br. 9-10 (emphasis in original); See also Reply Br. 4. We are unpersuaded by the Appellants’ arguments as they are not commensurate in scope with claim 17. Claim 17 does not require updating information at only one of the memory structures. Rather, claim 17 recites: “updating with obtained meter data selected data within said at least one associated memory structure,” (emphasis added) which means that more Appeal 2010-008060 Application 10/949,603 6 than one associated memory structure may be encompassed within the scope of claim 17. The Appellants also argue that the Examiner has impermissibly used hindsight bias. App. Br. 11-12. We recognize that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning; however, such a reconstruction is proper so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). The Appellants do not meaningfully explain how the Examiner’s determination of obviousness is based only upon knowledge gleaned from the Appellants’ Specification. Moreover, the Appellants’ related argument that a person of ordinary skill in the art at the time of the invention would not have reasonably looked to Patel to solve a problem already solved by Cain is unsupported by objective evidence, such as testimony by one with ordinary skill in the art. Argument of counsel cannot take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). For all these reasons, the rejection of claims 17, 19 and 20 as obvious over the applied prior art is sustained. Claim 18 Claim 18 depends from claim 17 and further recites: “wherein said at least one associated memory structure and selected segments of said multi- segmented flash memory structure have substantially the same amount of data storage capacity.” We are unpersuaded by the Appellants’ arguments Appeal 2010-008060 Application 10/949,603 7 that the Examiner’s contentions are not supported in the prior art and are directly contrary to the subject matter of the Appellants’ Specification, which Appellants emphasize as prolonging the lifespan of the flash memory. App. Br. 13. We observe that the Examiner has taken Official Notice regarding the relationship between the sizes of the memory structures involving the typical tradeoff between the size and cost of the respective memories. See Ans. 6-7; FOA 4. The Appellants do not offer sufficient objective evidence to rebut the Examiner’s Official Notice. Furthermore, the Appellants’ different reason for using memory structures that have the same amount of data storage capacity is insufficient to rebut obviousness. In determining whether the subject matter of a claim is obvious, there is no requirement to look only to the problem that the applicant was trying to solve. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). We are further unpersuaded by the Appellants’ conclusory argument that the Examiner’s rationale fails to rise to the standard of “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” App. Br. 13 (citing KSR, 550 U.S. at 418). For these reasons, in addition to those addressing claim 17 above, the rejection of claim 18 as obvious over the applied prior art is sustained. DECISION We AFFIRM the rejection of claims 17-20 under 35 U.S.C. § 103(a). TIME PERIOD 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). Appeal 2010-008060 Application 10/949,603 8 AFFIRMED ELD Copy with citationCopy as parenthetical citation