Ex Parte 6991483 et al

Board of Patent Appeals and Interferences

Aug 7, 2012

95001083 (B.P.A.I. Aug. 7, 2012)

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.
95/001,083 10/01/2008 6991483 8157.013.RXUS00 1620
50659 7590 08/07/2012
BUTZEL LONG
IP DOCKETING DEPT
301 EAST LIBERTY STREET
SUITE 500
ANN ARBOR, MI 48104
EXAMINER
REICHLE, KARIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
______________

HENRY MILAN,
Patent Owner and Appellant

v.

APPLE, INC.,
Third Party Requester and Respondent
______________

Appeal 2012-008569
Reexamination Control No. 95/001,083
United States Patent 6,991,483
Technology Center 3900
______________

Before JOHN C. MARTIN, HOWARD B. BLANKENSHIP,
and STEPHEN C. SIU, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner Henry Milan (hereinafter “Appellant”)1 appeals under
35 U.S.C. §§ 134(b) and 315(a)(1) from the Examiner’s rejection of original

1 Appellant’s “Appeal Brief” (hereinafter “App’t Br.”) filed August 20,
(Continued on next page.)
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claims 1-5, 13, and 14 of U.S. Patent 6,691,483 (hereinafter “the 483
patent”) and new claims 15-17, added during this reexamination
proceeding.2 Third Party Requester Apple, Inc. (hereinafter “Respondent”),3
a party to the appeal under 35 U.S.C. § 315(b)(2), disputes Appellant’s
contentions.
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
We AFFIRM.

I. STATEMENT OF THE CASE
A. Related litigation
The ‘483 patent was the subject of litigation styled Milan v. Apple
Incorporated, 2:08CV11741 (E.D. Michigan), which has been dismissed.4
B. This Reexamination Proceeding

2010, at 4, para. I.
2 The ‘483 patent issued to inventors Henry Milan and John C. Beard on
January 31, 2006, based on Application 10/987,242, filed November 12,
2004. The ‘483 patent identifies itself as a continuation-in-part of
Application 10/965,641 (now Patent 7,419,393), filed October 14, 2004,
which is a continuation-in-part of Application 10/328,519 (now Patent
7,004,787), filed December 23, 2002, which claims the benefit of U.S.
Provisional Application 60/387,796, filed June 11, 2002, and U.S.
Provisional Application 60/401,900, filed August 8, 2002.
3 “Third Party Requester’s Respondent Brief Pursuant to 37 C.F.R. § 41.68”
(“Resp’t Br.”) at 1, para. I.
4 “Litigation Search Report CRU 3999” dated October 9, 2008, at 1, 6.
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1. This proceeding arose from an October 1, 2008, “Request for Inter
Partes Reexamination of U.S. Patent 6,991,483” (hereinafter “Request”).
The ‘483 patent issued on January 31, 2006, with claims 1-14.5 The Request
proposed twenty-eight grounds of rejection of claims 1-5, 13, and 14 under
35 U.S.C. §§ 102 and 103(a), which are designated as rejections A-BB.
Request 3-4.
2. Reexamination was ordered on November 28, 2008, in an “Order
Granting/Denying Request for Inter Partes Reexamination” (hereinafter
“Order”). The Order was accompanied by a first, non-final Office action
(hereinafter “Non-final Action”) in which the Examiner:
(a) numbered the rejections proposed in the Request as rejections 1-28
(Non-final Action 2);
(b) entered rejection 1 for anticipation of claims 1, 2, 5, and 13 under
35 U.S.C. § 102(b) by DC506 (id. at 5-8);
(c) refused to adopt rejections 2-28 (id. at 5); and
(d) entered the following three new rejections of claims 1-5, 13, and
14:
(i) Claim 14 under 35 U.S.C. § 103(a) for obviousness over
DC50 in view of Belenson7 (id. at 19);

5 As explained below, Inter Partes Reexamination Certificate 6,991,483 C1,
which issued September 14, 2010, and canceled claims 1-5, 13, and 14, has
been vacated.
6 Kodak Digital Science™ DC50 zoom camera User’s Guide, Eastman
(Continued on next page.)
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(ii) Claims 1, 2, 5, 13, and 14 under § 103(a) for obviousness
over Palm8 and Tungsten9 (id. at 20); and
(iii) Claims 3 and 4 under § 103(a) for obviousness over Palm
and Tungsten in view of Sirichai.10 Id. at 21.
All of the above entered rejections are before us, plus some rejections
of new claims 15-17, discussed below.
3. In a “Patent Owner’s Statement” filed December 29, 2008,
Appellant added new independent claim 15 and dependent claims 16 and 17.
In response to the “Third Party Requester’s Comments Under 37 CFR
1.947,” filed January 28, 2009, which (at 4) criticized the absence of the
required underlining in these new claims, Appellant on July 27, 2009, filed a
“Revised Patent Owner’s Statement” including the required underlining.
4. The revised patent owner’s statement was followed on August 26,
2009, by another “Third Party Requester’s Comments Under 37 CFR
1.947,” which argued (at 19-20) that new claims 15-17 are unpatentable
under 35 U.S.C. § 112 for lack of written description support.
5. In a September 23, 2009, “Action Closing Prosecution” (“ACP”),
the Examiner:

Kodak Company (Jan. 1996).
7 Belenson U.S. Patent 4,210,186, issued July 1, 1980.
8 Palm VTM Handbook Travel Kit, 3Com (©1998).
9 Handbook for Palm™ Tungsten™ T Handhelds, Palm, Inc. (© 1998-
2002).
10 Sirichai et al. U.S. Patent 6,921,284 B2, issued July 26, 2005.
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(a) repeated the rejections of claims 1-5, 13, and 14 made in the Non-
final Action (ACP at 7-18); and
(b) entered the following rejections of claims 15-17:
(i) under 35 U.S.C. § 112 (first paragraph, written description
requirement) (id. at 3);
(ii) under 35 U.S.C. § 102(b) for anticipation by Palm (id.
at 18); and
(iii) under 35 U.S.C. § 103(a) for obviousness over DC50 in
view of Anderson.11 Id. at 21.
6. Appellant on October 23, 2009, filed a “Patent Owner’s Response”
(“Response”) proposing to amend claims 1-4, and 13, cancel claims 5 and
15-17, and add new claims 18-26. The Response was accompanied by
Exhibits A-E, of which Exhibit A is a “Declaration of Henry Milan and John
C. Beard” (hereinafter “Declaration”), discussed at page 16 of the Response.
Exhibits B-E, which are not mentioned in the Declaration, are documents
relied on at page 13 of the Response to show that Mini-DIN 8-pin serial
ports were used in Macintosh computers as of the January 1996 date of
DC50.
7. The October 23, 2009, Response also was accompanied by a
“Petition Under 37 C.F.R. 1.182 Requesting Continued Reexamination or
Entry of Amendment After Action Closing Prosecution.”

11 Anderson et al. U.S. Patent 5,943,093, issued August 24, 1999.
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8. In a December 2, 2009, decision, the petition was dismissed as
premature and jurisdiction was returned to the examiner with instructions to
treat the “patent owner amendment, evidence and remarks (filed with the
petition) as submissions under 37 CFR 1.951(a).” Decision Dismissing
Petition Under 37 CFR 1.182, at 3, paras. 1-3.
9. In a February 19, 2010, “Right of Notice of Appeal” (“RAN”), the
Examiner, citing 37 C.F.R. §§ 1.951(a) and 1.116, gave the following
reasons for refusing to enter “[t]he amendment and declaration filed
October 23, 2009”:12
1. The amendment raises new issues that would require
further search and consideration. . . .
2. The amendment adds new claims without cancelling a
corresponding number of finally rejected claims.
3. The amendment is not deemed to place the application
in better form for appeal by materially reducing or simplifying
the issues for appeal.
4. The declaration of Mr. Henry Milan and Mr. John C.
Beard failed to provide a showing of good and sufficient

12 37 C.F.R. § 1.116 reads in relevant part:
(e) An affidavit or other evidence submitted after a final
rejection or other final action (§ 1.113) in . . . an inter partes
reexamination filed under § 1.913 but before or on the same
date of filing an appeal (§ 41.31 or § 41.61 of this title), may be
admitted upon a showing of good and sufficient reasons why
the affidavit or other evidence is necessary and was not earlier
presented.
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reasons why the declaration was necessary and not earlier
presented.
RAN 4-5.13 In addition, the Examiner repeated all of rejections of claims 1-
5 and 13-17 from the Action Closing Prosecution with the exception of the
35 U.S.C. § 112 rejection of claims 15-17, which is not mentioned in the
Right of Appeal Notice. RAN 8, 12, 13, 18, 19, 22.14
10. On March 17, 2010, Appellant timely filed a “Notice of Appeal”
accompanied by two petitions challenging the Examiner’s refusal to enter
“the Amendment filed October 23, 2009”: (a) a “Renewed Petition Under 37
CFR 1.181 Requesting Entry of Amendment” (hereinafter “1.181 petition”);
and (b) a “Renewed Petition Under 37 CFR 1.182 Requesting Continued
Reexamination” (“1.182 petition”).15

13 Exhibits B-E to the October 23, 2009, Response are not mentioned in the
Right of Appeal Notice. Because the Examiner has not indicated that these
exhibits have been entered, we assume they were refused entry for the same
reasons as the Declaration (Ex. A), i.e., for lack of a showing of good and
sufficient reasons why they are necessary and were not earlier presented, as
required by 37 C.F.R. § 1.116(e).
14 The § 112 rejection is therefore presumed to have been withdrawn. See
Manual of Patent Examining Procedure (MPEP) § 2673.02 (8th ed., rev. July
2010) (“Any grounds of rejection and findings of patentability relied upon
should be restated in the RAN.”). Appellant’s brief is therefore incorrect to
address (at 18) the merits of this rejection. Furthermore, the Right of Appeal
Notice erroneously states (at 1, numeral 2) that “Claims 15-17 have been
cancelled.”
15 Neither petition specifically mentions the October 23, 2009, Declaration
(Ex. A) or any of Exhibits B-E.
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11. Although Respondent was authorized by 37 C.F.R. § 41.61(b)(2)
to file a notice of cross-appeal by March 31, 2010, i.e., fourteen days from
the date of service of Appellant’s Notice of Appeal, no notice of cross appeal
was filed.
12. In an April 26, 2010, decision, the 1.181 petition (filed March 17,
2010) was dismissed because “entry of the proposed amendment after ACP
would create multiple new issues including broadening rejections and
additional search and/or consideration of newly proposed claim limitations.”
Decision Dismissing Petition and Refusing Entry of Paper, at 4.
13. In a May 14, 2010, decision, the 1.182 petition (filed March 17,
2010) was dismissed because “the October 23, 2009 amendment addresses
issues first raised in the non-final action, and not issues that arose at a point
of prosecution such that patent owner had no earlier opportunity to address
them.” Decision Dismissing Petition Under 37 CFR 1.182, at 5.
Furthermore, after noting (id. at 5, last para.) that the 1.182 petition does not
mention the Declaration filed with the October 23, 2009, Response, the
decision states that “reopening of the prosecution to consider the October 23,
2009 amendment and declaration that were not submitted at the earliest
possible point in the proceeding would be contrary to the statutory mandate
for ‘special dispatch within the Office’ in inter partes reexamination.” Id.
at 6.
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14. Appellant’s appeal brief was due on May 31, 2010, which is two
months after the March 31, 2010, due date for a notice of cross appeal.
37 C.F.R. § 41.66(a). Appellant did not file a brief by that date.
15. On June 14, 2010, the Examiner issued a “Notice of Intent to
Issue Inter Partes Reexamination Certificate” (NIRC) canceling claims 1-5,
13, and 14, citing Appellant’s failure to file an appeal brief.
16. On June 16, 2010, Appellant sought reconsideration of the
April 26, 2010, and May 14, 2010, petition decisions by filing: (a) a
“Petition Under 37 CFR 1.181 Requesting Reconsideration of Decision
Dismissing Petition”; and (b) a “Petition Under 37 CFR 1.182 Requesting
Reconsideration of Decision Dismissing Petition.”
17. On June 21, 2010, Appellant filed a “Petition Under 37 CFR
1.183 Requesting Extension of Time to File Appeal Brief” (hereinafter
“1.183 petition”).
18. On June 30, 2010, Appellant filed an “Appeal Brief.”
19. In a July 27, 2010, decision, the 1.183 petition (filed June 21,
2010) was dismissed because of termination of the reexamination
proceeding due to Appellant’s failure to file an appeal brief. Decision
Dismissing Petition Under § 1.183, at 4. Appellant was advised that
“[p]etitions for entry of papers in a terminated reexamination are properly
addressed under 37 C.F.R. §§ 1.137(a) and 1.137(b), as set forth in 37
C.F.R. § 1.958” and that a reexamination certificate would issue in the
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absence of patent owner action under § 1.137(b) to revive the proceeding.
Id.
20. In an August 6, 2010, decision, the 1.182 petition (filed June 16,
2010) was dismissed because “[the] instant proceeding is terminated due to
patent owner’s failure to timely file an appellant brief before May 31, 2010.”
Decision Dismissing Patent Owner Petition Under 37 CFR 1.182 and Third
Party Requester Opposition, at 4, para. II.
21. On August 20, 2010, Appellant filed: (1) a “Petition for Revival
of an Application for Patent Abandoned Unintentionally Under 37 CFR
1.137(b)”; (2) a “Petition Under 37 CFR 1.956 Requesting Extension of
Time to File Appeal Brief” (“1.956 petition”); and (3) a copy of the “Appeal
Brief” that was initially filed on June 30, 2010.
22. In an August 25, 2010, decision, the 1.956 petition was denied
because it was filed prior to the due date for filing the brief. Decision
Denying Petition for Extension of Time To File an Appeal Brief, at 1.
23. On September 14, 2010, “Inter Partes Reexamination Certificate
6,991,483 C1” was issued, canceling claims 1-5, 13, and 14 and stating that
claims 6-12 were not reexamined.
24. On April 18, 2011, a “Decision Granting Petition Under 37 CFR
1.137(b) and Vacating Certificate” was issued, stating (at 5):
1. The August 20, 2010 patent owner petition to revive
under 37 CFR 1.137(b) is granted.
2. The termination of the prosecution noted in the
June 14, 2010 NIRC, and the NIRC itself, are vacated.
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3. The Inter Partes Reexamination Certificate issued
September 14, 2010, is vacated.
4. Patent owner’s August 20, 2010 appellant’s brief is
hereby entered in the record, thus triggering the third party
requester’s right to file a respondent’s brief under 37 CFR
41.68. The third party requester may file a respondent’s brief
within one month of the mailing date of this decision.
25. Respondent’s appeal brief was timely filed on May 17, 2011.
26. The Examiner’s Answer, mailed January 13, 2012, incorporates
by reference the Right of Appeal Notice.
27. A timely rebuttal brief, labeled “Reply Brief” (hereinafter “Reply
Br.”), was filed by Appellant on February 13, 2012, as acknowledged in the
Examiner’s communication mailed May 4, 2012.16

C. The Relevant Description in the ‘483 Patent
The invention at issue is described in the ‘483 patent as
concern[ing] a flash memory device including a housing having
opposed first and second ends; a flash memory drive enclosed
in the housing; and a quick connector mounted in the housing
and having a plurality of pins exposed at the second end, the
pins being configured for connection to a selected one of at
least two different interchangeable connectors.

16 Appellant, by acquiescing to the briefing timetable set forth in the
April 18, 2011, petition decision, implicitly withdrew the undecided
“Petition Under 37 CFR 1.181 Requesting Reconsideration of Decision
Dismissing Petition,” filed June 16, 2010.
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‘483 patent specification 2:21-27. The flash memory can be part of a kit that
includes a container for storing the interchangeable connectors and the flash
memory device when not in use. Id. at 2:44-46.
Figures 18-20 of the ‘483 patent are reproduced below.

Figures 18 and 19 are a top plan view and front elevation view, respectively,
of a flash memory storage device with a quick connector in accordance with
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the invention. Id. at 4:9-13. Figure 20 is a schematic block diagram of the
flash memory device and quick connector of Figures 18 and 19. Id. at 4:14-
15. The first end 404 of housing 400 includes a loop portion 408 for
attachment to, for example, a key chain. Id. at 12:43-47. The second end
406 includes a female quick connector 410 consisting of two sets of three
pins 414 that are connected to flash drive memory drive 418. Id. at 12:60-
66.
The ‘483 patent explains that “[p]referably, a flash memory drive 418
(FIG. 20) is selected from various commercially available flash drives well
known to those skilled in the art including, but not limited to, those
manufactured and/or sold by Sony®, SanDisk®, Iomega®, Lexar®,
Verbatim®, Targus®, and the like.” Id. at 12:48-52. The ‘483 patent
further explains that
[f]lash memory is well known and is utilized in various portable
storage devices for transferring and storing computer files and
programs. A typical flash memory device has a housing
including an integral connector for connecting to a USB port on
a computer. When plugged into a USB port, the computer’s
operating system recognizes the flash memory device as a
removable drive and allows data to be retrieved from and
written to the flash memory drive.
Id. at 2:6-17.
Quick connector 410 can be connected to the mating end of any of the
interchangeable connectors 203-07 (id. at 13:23-27), which are depicted in
Figure 15, reproduced below.
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Figure 15 shows a universal computer cable kit 300 that includes: (1) a
universal cable 20 having a universal cable first connector portion 24A and a
universal cable second connector portion 24B attached to opposing ends
thereof; and (2) and a plurality of different interchangeable plugs or
connectors 203-07, including a 4-Pin USB Series “A” Receptacle 203, a 4-
Pin USB Series “A” Plug 204, a 4-Pin USB Series “B” Plug 205, a 5-Pin
USB 2.0 Specification Mini-“A” Plug 206, and a 4-Pin USB 2.0
Specification Mini-“B” Plug 207. Id. at 9:54-64. These interchangeable
connectors advantageously allow the flash memory device 400 to be
configured in a plurality of conventional connector configurations,
depending on the needs of the user. Id. at 13:37-40. For example, when the
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4-Pin USB Series “A” plug 204 is attached to the quick connector 410 of the
flash memory device 400, the flash memory drive 418 is advantageously
operable to connect to a computer or a hub (not shown) having the
corresponding conventional USB port. Id. at 13:40-45.
The ‘483 patent explains by way of example that “[w]hen connector
204 with the flash memory device 400 is engaged with the USB port (not
shown) in the computer, the operating system of the computer will recognize
the flash memory drive 418 as a removable drive and allow data to be
retrieved from and written to the flash memory storage.” Id. at 13:45-50.

D. The Claims on Appeal
The original independent claims on appeal are claims 1 and 13, which
read as follows:
1. A flash memory device comprising:
a housing having opposed first and second ends;
a flash memory drive enclosed in said housing; and
a quick connector mounted in said housing and having a
plurality of pins exposed at said second end, said pins being
configured for electrical connection to a selected one of at least
a first interchangeable connector and a second interchangeable
connector, the first interchangeable connector having a first pin
configuration for mating with said pins of said quick connector
and being connected to a second pin configuration different
from the first pin configuration, the second interchangeable
connector having the first pin configuration for mating with
said pins of said quick connector and being connected to a third
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pin configuration different from the first pin configuration and
the second pin configuration, the second and third pin
configurations being pin configurations of different types of
conventional connectors.
13. A flash memory kit comprising:
a flash memory device including a flash memory drive
connected to a female quick connector; and
at least two interchangeable connectors each having a
male quick connector with a first pin configuration adapted to
engage said female quick connector,
a first one of said interchangeable connectors having said
male quick connector connected to a second pin configuration
different from said first pin configuration and a second one of
said interchangeable connectors having said male quick
connector connected to a third pin configuration different from
said first pin configuration and said second pin configuration,
said second and third pin configuration being pin configurations
of different types of conventional connectors.
Claims App. (App’t Br. 36-37).
Claim 15 is similar to claim 1 but more specifically recites that the
flash memory device “ha[s] primarily flash memory,” that the flash memory
drive is “fixed” and “internal,” and that the quick connector is “electrically
connected” to the flash drive:
15. A flash memory device having primarily flash
memory comprising:
a housing having opposed first and second ends;
a fixed internal flash memory drive enclosed in said
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housing; and
a quick connector mounted in said housing, electrically
connected to said flash memory drive and having a plurality of
pins exposed at said second end, said pins being configured for
electrical connection to a selected one of at least a first
interchangeable connector and a second interchangeable
connector, the first interchangeable connector having a first pin
configuration for mating with said pins of said quick connector
and being connected to a second pin configuration different
from the first pin configuration, the second interchangeable
connector having the first pin configuration for mating with
said pins of said quick connector and being connected to a third
pin configuration different from the first pin configuration and
the second pin configuration, the second and third pin
configurations being pin configurations of different types of
conventional connectors.
Id. at 37 (emphasis added).
During reexamination, claims are given the broadest reasonable
interpretation consistent with the specification and limitations in the
specification are not read into the claims. MPEP § 2258(I)(G) (citing In re
Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984); In re Trans Texas Holdings
Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007).
Parent Application 10/965,641 (now Patent 7,419,393) does not
include any of Figures 18-20 or any description of flash memory.
Consequently, the claim terms therefore must be construed as of the
November 12, 2004, actual filing date of the ‘483 patent. See Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (“the ordinary
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and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application”).

E. The Rejections:17
1. Claims 1, 2, 5, and 13 stand rejected under 35 U.S.C. § 102(b) for
anticipation by DC50 (RAN 8);
2. Claim 14 stands rejected under 35 U.S.C. § 103(a) for obviousness
over DC50 in view of Belenson (id. at 12);
3. Claims 1, 2, 5, 13, and 14 stand rejected under § 103(a) for
obviousness over Palm and Tungsten (id. at 18); and
4. Claims 3 and 4 stand rejected under § 103(a) for obviousness over
Palm and Tungsten in view of Sirichai (id.);
5. Claims 15-17 stand rejected under 35 U.S.C. § 102(b) for
anticipation by Palm (id. at 19); and
6. Claims 15-17 stand rejected under § 103 for obviousness over
DC50 in view of Anderson (id. at 22).

II. DISCUSSION

17 Appellant’s Appeal Brief incorrectly states (at 18) that claims 15-17 stand
rejected under 35 U.S.C. § 112. As noted above, this rejection appears on
the Action Closing Prosecution (at 3-4) but is not repeated in the Right of
Appeal Notice.
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A. Anticipation by DC50 (Claims 1, 2, 5, and 13)
As explained in more detail below, DC50 discloses a digital camera
having an internal memory and optional removable flash memory cards for
storing pictures and cables for connecting the camera to a Macintosh
computer or an IBM-PC computer. The principal questions raised by the
rejection are whether the Examiner erred in finding that:
(1) the camera is a “flash memory device”;
(2) the removable memory card is a “flash memory drive; and
(3) the Macintosh cable satisfies the pin requirements of the recited
“first interchangeable connector.”

The figure that appears at page 16 of DC50 is reproduced below.
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As indicated in the caption, this figure shows the front of the camera.
Pictures can be stored in the camera’s internal memory and on
optional removable memory cards. DC50 at 3. The removable memory card
can be a “Flash” or PCMCIA-ATA memory card, such as a SanDisk™
memory card. Id. at 45. “You can insert a PCMCIA-ATA memory card in a
PCMCIA-ATA card reader slot (if there is one) on your computer and
download the pictures on the card.” Id.

The figure appearing at page 61 of DC50 is reproduced below.
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This figure shows the camera’s serial and AC power adapter ports.
The camera comes with two cables: (1) a first serial cable for
connecting the camera to the modem port or printer port of a Macintosh
computer; and (2) second serial cable for connecting the camera to an IBM-
PC (or compatible) computer. Id. at 2, 59-63. The serial cables permit the
user to “transfer the DC50 zoom camera pictures to [the] computer using the
software provided with the camera.” Id. at 61, 63.
Comparing claim 1 to the DC50 camera, the Examiner reads the
recited “flash memory device” on the camera, the “flash memory drive” on
the removable memory card, the “housing” on the camera housing, the
“quick connector” on the serial port, the “first interchangeable connector” on
the Macintosh serial cable, and the “second interchangeable connector” on
the IBM-PC serial cable. RAN 8-11, paras. 1-26.

1. Whether the DC50 camera is a “flash memory device”
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The Examiner interprets the claim term “flash memory device,” when
given its broadest reasonable interpretation, as “any device having a flash
memory”:
At the time the ‘483 patent was filed there was no standard
definition of “flash memory device”. The plain meaning of this
terminology is -any device having a flash memory-. In the
absence of any evidence to the contrary and as this is the
broadest reasonable interpretation, the examiner will employ
this definition for “flash memory device”.
RAN 6 (quoting Non-final Action18 3-4).
Appellant disagrees, arguing that “[c]learly, the scope of the flash
memory storage device is defined in the Specification as a computer
peripheral that is connected to another computer or computer peripheral
using a universal computer cable having quick connectors with
interchangeable ends.” App’t Br. 22. As support, Appellant quotes the
following paragraph from column 1, lines 17-29 of the ‘483 patent:
The present invention relates to computers, computer
peripherals, computer related devices and other devices that
may benefit from a quick and efficient method and/or system
for connection to other like or different devices. More
particularly, the present invention relates to a system and
method for connecting computers and/or computer peripherals
to other computers and/or computer peripherals using a
universal computer cable having quick connectors and
interchangeable ends, and a universal cabling system and
method of using the connectors to connect computers, computer

18 Office Action mailed November 28, 2008.
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peripherals, computer related devices and other devices
together. One such computer peripheral is a flash memory
storage device.
App’t Br. 22.
We do not agree that the above-quoted passage limits the claimed
“flash memory device” to a computer peripheral. Instead, the passage
merely describes an example of the claimed flash memory device.
Furthermore, assuming for the sake of argument that this passage limits the
claimed “flash memory device” to a computer peripheral, we are not
persuaded that the DC50 camera cannot reasonably be characterized as a
computer peripheral.
Appellant’s further argument that “[t]he drawings and claims further
support [the above] definition” (App’t Br. 22) is unpersuasive because it
improperly reads limitations from the drawings into the claims and because
Appellant has not explained which claim language supports this definition
and why.
Appellant also argues that “[a] flash memory device, as is understood
in the art, clearly provides for memory storage, and includes the necessary
processing circuitry so that data can be directly transferred between the
memory associated with the flash memory device and a second device” (id.
at 27; emphasis added). However, no evidence is cited in support of such a
definition of “flash memory device.” See Estee Lauder Inc. v. L’Oreal, S.A.,
129 F.3d 588, 595 (Fed. Cir. 1997) (citation omitted). (“[A]rguments of
counsel cannot take the place of evidence lacking in the record.”).
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Although Appellant states that “[t]he present disclosure still further
provides for a flash memory storage device having primarily flash memory,”
citing the ‘483 patent specification at column 12, lines 41-56 (App’t Br. 12),
Appellant does not contend that this is required by the language of
independent claims 1 and 13.19
We also note that the Examiner initially appeared to be interpreting
“flash memory device” to mean “flash drive” in the last sentence of the
following paragraph:
At the time of the invention, the terminology “flash
drive” was commonly used to refer to a USB flash drive (also
known as a thumb drive), a Compact Flash card with a USB
connector, or similar products produced by SanDisk and others.
In all of these “flash drives” an essential component is a flash
memory. Accordingly, the examiner will assume that the use of
the word “memory” in the terminology “flash memory drive”
does not differentiate it from the commonly used terminology
“flash drive”. Thus, for purposes of this proceeding the
examiner will adopt the common definition of “flash drive” for
the claim terminology “flash memory device”.
Non-final Action 4 (emphasis added) (quoted at RAN 6, 4th para.).
However, the Examiner subsequently explained that the phrase “flash

19 Regarding new independent claim 15, whose preamble recites “[a] flash
memory device having primarily flash memory,” Appellant in addressing the
§ 112 rejection, argues that “the term ‘primarily’ in the preamble should
have minimal patentable weight attributed to the term,” which “merely
provides the context for the invention described in the body of the claim.”
App’t Br. 18.
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memory device” in the last sentence of the above-quoted paragraph should
instead read “flash memory drive.” See ACP 5, last para.; RAN 7, lines 1-2
(“As an initial matter, the examiner notes that there appears that there is a
typo in the last line of the fourth paragraph. The word ‘device’ should be -
drive-”).
For the foregoing reasons, Appellant has not shown error in the
Examiner’s interpretation of “flash memory device” to be broad enough to
read on “any device that includes flash memory” or the Examiner’s finding
that the DC50 camera constitutes such a device. As a result, we do not agree
with Appellant’s statement that “a camera is simply not a flash memory
device.” App’t Br. 25.

2. Whether the removable memory card in DC50 is a “flash memory
drive”
The ‘483 patent does not provide an express definition of the term
“flash memory drive,” which appears in each independent claim.
As noted above, the Examiner gave the following reasons for
interpreting “flash memory device” to mean “flash drive”:
At the time of the invention, the terminology “flash
drive” was commonly used to refer to a USB flash drive (also
known as a thumb drive), a Compact Flash card with a USB
connector, or similar products produced by SanDisk and others.
In all of these “flash drives” an essential component is a flash
memory. Accordingly, the examiner will assume that the use of
the word “memory” in the terminology “flash memory drive”
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does not differentiate it from the commonly used terminology
“flash drive”.
RAN 6-7. Based on this interpretation, the Examiner found that
the removable memory card in the DC50 camera is a “flash memory drive,”
Id. at 8, item 3. For the following reasons, Appellant has failed to persuade
us of error in this position of the Examiner.
One of Appellant’s arguments is that the Examiner has not provided
any evidence to support his statement that “at the time of the invention, the
terminology ‘flash drive’ was commonly used to refer to a USB flash drive,
a Compact Flash card with a USB connector or similar produced by
San[D]isk or others.” App’t Br. 23-24. More particularly, Appellant asserts
that “[w]hile the Examiner mentions the possibility of a ‘Compact Flash
Card with a USB connector’, the Examiner has not provided direct evidence
of such a device, or whether such devices where known prior to the filing
date of the ‘483 patent.” Id. at 27. This argument is unpersuasive for two
reasons. First, it is not necessary to decide whether the Examiner is correct
to have concluded that the term “flash drive” (or “flash memory drive”)
reads on “a Compact Flash card with a USB connector,” because none of the
references is relied on for a teaching of such a flash card. Second, it is not
the Examiner’s burden to define the claim terms. The Examiner’s initial
burden in making out a prima facie case of anticipation is satisfied by
specifically identifying the reference subject matter on which the claim
terms allegedly read. See In re Hyatt, 211 F.3d 1367, 1371 (Fed. Cir. 2000)
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(the Examiner’s interpretation of claim terms may be implied by the
discussion of the rejection rather than expressly stated). As noted above, the
Examiner reads the recited “flash memory drive” on the “Flash” or
PCMCIA-ATA memory card described at page 45 of DC50. As a result, the
burden shifted to Appellant to demonstrate that the claim language, when
given its broadest reasonable interpretation, does not read on this subject
matter in DC50. “It is the applicants’ burden to precisely define the
invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1066 (Fed. Cir.
1997). For the following reasons, Appellant has not satisfied this burden.
Appellant argues that “the meaning of ‘flash memory drive’ that is
consistent with the Specification and industry standards . . . is a flash
memory with integral drivers,” which, Appellant contends, is “clearly
distinguishable from a memory card which requires a separate card reader in
order for the information stored within the memory to be transferred to the
processor of a second device.” App’t Br. 25 (emphasis added). More
particularly, Appellant states that in the DC50 camera,
while not stated, there is presumabl[y] one communication
circuit for transferring data between the processor and the
memory card, and the communication circuit includes a read
and/or write device, such as a memory card reader. Memory
card readers are separate devices from the memory card used to
read and/or write data to or from a memory card.
Id. at 15 (emphasis added). Appellant’s argument that a “flash memory
drive” requires an integral driver is unpersuasive because neither of the two
pieces of evidence cited as support for such a definition is entitled to
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consideration in this appeal. Reliance on the above-discussed Declaration
(App’t Br. 24) is improper because it was never entered by the Examiner.
See 37 C.F.R. § 41.67(c)(1)(ix) (“Reference to unentered evidence is not
permitted in the brief.”). Nor is the declaration identified in the Evidence
Appendix to the brief, as required for its consideration. Id.
The second piece of evidence cited as support is described as follows:
As described in “Memory Drive”, Wikipedia, a memory drive is
a USB compatible device that includes a memory, a processor
and a USB connector. The memory drive includes a driver, so
that it is directly readable by another processor. Thus, the drive
serves the same function as a hard drive. This device is clearly
distinguishable from a memory card which requires a separate
card reader in order for the information stored within the
memory to be transferred to the processor of a second device.
App’t Br. 24-25. Reliance on this Wikipedia information is improper
because it was presented for the first time in Appellant’s brief and has not
been entered by the Examiner. See 37 C.F.R. §§ 41.67(c)(2) (“A brief shall
not include any new or non-admitted amendment, or any new or non-
admitted affidavit or other evidence. See . . . § 41.63 for amendments,
affidavits or other evidence after the date of filing the appeal.”).20
Furthermore, Appellant has not provided a copy of the Wikipedia entry
relied upon or demonstrated that it describes the understanding of “memory

20 Section 41.63(c) explains that “[a]ffidavits or other evidence filed after
the date of filing an appeal pursuant to § 41.61 will not be admitted except
as permitted by reopening prosecution under § 41.77(b)(1).”
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drive” as of the November 12, 2004, filing date of the ‘483 patent. See In re
Voss, 557 F.2d 812, 818 n.15 (CCPA 1977) (later-issued patents and
publications can be relied on to construe claim language only if a showing is
made that such claim language is the “language of the present art” as of the
filing date of the application in question).
The additional argument that “[i]n the art, the term drive refers to the
ability of a computer to read and write flash-drive data using the same
system commands as for a mechanical disk drive” (App’t Br. 27) is
unpersuasive because it presumably is based on the above-discussed
Declaration and/or Wikipedia information.
In another argument, Appellant, after accurately characterizing
column 13, lines 37-50 of the ‘483 patent as disclosing that “the flash
memory drive is recognized as a removable drive so that data may be
directly retrieved from and written to the flash memory portion of the flash
memory drive” (App’t Br. 26),21 argues that
[t]he camera disclosed by the DC50 reference does not
disclose, teach or otherwise anticipate the flash memory device
taught by the present patent, 6,991,483. . . . In [the] memory

21 The cited lines read in relevant part as follows:
When connector 204 with the flash memory device 400 is
engaged with the USB port (not shown) in the computer, the
operating system of the computer will recognize the flash
memory drive 418 as a removable drive and allow data to be
retrieved from and written to the flash memory storage.
‘483 patent specification 13:45-51.
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card, the digital image data must be written onto the memory
card using a memory card reader in a compatible format. In
order to transfer the digital image data from the memory card to
another peripheral device, the digital image data is read from
the memory card using the memory card reader, formatted, and
transferred to the peripheral device.
Id. at 26-27 (emphasis added). This argument is unpersuasive because
comparing DC50 to “what is taught by the present patent, 6,991,483” rather
than to the claim language amounts to improperly reading limitations from
the specification into the claims.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s conclusion that claim term “flash memory drive” is broad
enough to read on the removable flash card in DC50.

3. Whether the Macintosh cable described in DC50 satisfies the pin
requirements of the recited first interchangeable connector
As noted above, the Examiner reads the recited “first interchangeable
connector” on the Macintosh serial cable and reads the “second
interchangeable connector” on the IBM-PC serial cable.
Appellant argues that “since the first pin configuration and the second
pin configuration of the DC50’s Macintosh cable are both Mini-DIN 8-pin
configurations, the cable does not have a first pin configuration different
from the second pin configuration as required by the Claims.”
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App’t Br. 28.22 This argument is unpersuasive because it is based on
Exhibits B-E to the October 23, 2009, Response. These exhibits are entitled
to no consideration because they are not identified in the Evidence Appendix
to the brief and were never entered by the Examiner, as required for their
consideration in this appeal. 37 C.F.R. § 41.67(c)(1)(ix).

4. Whether claims 1 and 13 require a physical or electrical
connection between the interchangeable connectors and the flash
memory drive
Claim 1 recites that the “quick connector” mounted in the housing that
encloses the flash memory drive “ha[s] a plurality of pins . . . configured for
electrical connection to a selected one of at least a first interchangeable
connector and a second interchangeable connector.” Claim 13 employs
similar language. Claim 15, on the other hand, further specifies that the
quick connector is electrically connected to the flash memory drive.
Appellant disputes the Examiner’s conclusion (RAN 6, last para.) that
claims 1 and 13 do not require a physical or electrical connection between
the interchangeable connectors and the flash memory drive. App’t Br. 23.
Furthermore, according to Appellant, DC50 fails to describe such an
electrical connection. See id. at 33 (“Neither of these devices [in DC50 and

22 Appellant does not deny that the IBM-PC cable satisfies the requirements
of the recited “second interchangeable connector.”
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Anderson] are a flash memory storage device having a flash memory drive
electrically connected to a first connector and a second connector.”).
As support for construing claims 1 and 13 as requiring an electrical
connection between the interchangeable connectors and the flash memory
drive, Appellant cites column 13, lines 23-27, of the ‘483 patent, which
reads: “The interchangeable connectors 203, 20[4], 205, 206, and 207,
therefore, are each operable to be interchangeably and releasably connected
to the connector 410 to electrically communicate with the flash memory 418
in the housing 402.” Id. at 23. However, as noted by Respondent, it is
improper to import a limitation from the specification into the claims.
Resp’t Br. 7.

5. Conclusion Regarding Anticipation Rejection Based on DC50
For the foregoing reasons, the rejection of independent claim 1 under
35 U.S.C. § 102(b) for anticipation by DC50 is sustained, as is the rejection
on this ground of dependent claims 2 and 5 and independent claim 13, which
Appellant has argued as a group along with claim 1. App’t Br. 20.

B. Obviousness over DC50 in View of Belenson (Claim 14)
Appellant’s sole argument for the patentability of claim 14 over DC50
and Belenson is that it depends on claim 13, which Appellant contends is
patentable over DC50. App’t Br. 32-33. The rejection of claim 14 therefore
is sustained for the same reasons as the rejection of claim 13.
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C. Obviousness over Palm and Tungsten (Claims 1, 2, 5, 13, and 14)
Appellant characterizes Palm and Tungsten as describing “electronic
organizers.” App’t Br. 31.
Palm describes a “Palm V Handbook Travel Kit.” Palm, cover page.
The two figures appearing at page 5 of Palm are reproduced below.

The upper figure shows a HotSync® cable, and the lower figure shows a
Palm V recharger unit. Id. at 5. The Examiner reads the recited first and
second interchangeable connectors on this cable and recharger, respectively.
RAN 13-14, paras. 7, 9.

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The figure at page 7 of Palm is reproduced below.

This figure shows that the Palm V organizer can be connected to a connector
of the recharger. Id. at 7. The Examiner reads the recited “quick connector”
on this connector. RAN 13, para. 4.

The figure at page 9 of Palm is reproduced below.
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This figure shows that the HotSync® cable can be connected between the
connector on the Palm V organizer and a computer.
The Examiner found that “Palm discloses a flash memory device
(Palm V which has an internal flash memory as evidenced by the Palm press
release of February 22, 1999, on page 2 at line 21).”23 RAN 13, para. 1.
Finding that “Palm fails to disclose a flash memory drive” (id. at 15, para.
25), the Examiner relies on Tungsten for such a teaching. Id. at 15, para, 29.

23 The title of this document is given in the Notice of References Cited
(PTO-892) that accompanied the Non-final Action as: “3Com Unveils the
Palm V™ and Palm IIIx™ Connected Organizers.” The link that appears at
the bottom of each page and reads “http://www.palm.com/us/company/pr/
1999/palmvpalmiiix.html” is no longer accessible.
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Tungsten is a “Handbook for Palm™ Tungsten™ T Handhelds.”
Tungsten, cover page and page 3.
The figure at page 12 of Tungsten is reproduced below.

The associated caption explains that this figure shows locations of top panel
components. This figure shows an expansion card slot, which can accept SD
or MultiMediaCard expansion cards, enabling the user to back up data, add
more memory, or use additional applications. RAN 12. The Examiner
characterizes the SD and MultiMediaCard expansion cards as “flash memory
drives.” Id. at 15, para. 29.
Appellant’s argument that “the Tungsten reference expressly teaches
the use of a flash memory card, which is clearly structurally and functionally
different from what one skilled in the art would consider a ‘flash drive’”
(App’t Br. 30) is unpersuasive for the reasons given above in the discussion
of the rejection for anticipation by DC50.
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We are also unpersuaded by Appellant’s reliance on the following
features described in the specification of the ‘483 patent, because they are
not recited in claims:
(1) “a flash memory storage device and quick connector in one
integral housing, such that the flash memory drive and quick connector are
permanently in electrical communication”;
(2) “both interchangeable and removable connectors being capable of
transmitting data from the flash memory device to a device connected to the
flash memory device via the interchangeable and removable connector”; and
(3) “direct access to the flash memory.”
Id. at 30 (italics added).
The Examiner concluded that the subject matter recited in claims 1, 2,
5, 13, and 14 would have been obvious because “[o]ne of ordinary skill in
the art would have recognized that applying the improvement (adding an
expansion card to the PDA of Palm) would have yielded predictable results
and resulted in an improved device.” RAN at 17, para. 3 (1st occurrence).
As an alternative rationale for the rejection, the Examiner, treating Tungsten
as the primary reference, concluded that “[o]ne of ordinary skill in the art
would have recognized that applying the improvement (providing
interchangeable connectors) would have yielded predicable results and
resulted in an improved device.” Id. at 17, para. 3 (2d occurrence). Both
rationales are consistent with KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398
(2007), which held, inter alia, that “if a technique has been used to improve
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one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.
As a result, we are not persuaded by Appellant’s argument that the Examiner
has not met the burden of providing “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness,” as
required by In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). App’t Br. 31.
Appellant also argues that “[t]he Examiner has not expressly stated
that the electronic organizer taught by both the Palm reference and the
Tungsten reference are analogous art to the flash memory storage device
taught by the Patent” and that
[t]he Examiner has not expressly stated why it would
have been obvious to a person of ordinary skill in that art at the
time of the Patent Owner’s invention to combine the teachings
of Palm and Tungsten with respect to an electronic organizer to
arrive at the teachings of the Patent Owner regarding a flash
memory storage device and quick connector in one integral
housing, such that the flash memory drive and quick connector
are permanently in electrical communication, and the use of
interchangeable connectors being capable of directly
transmitting data from the flash memory device to a device
connected to the flash memory device via the interchangeable
and removable connector, as taught by the Patent.
Id. at 31. The argument that Palm and Tungsten are nonanalogous art is
unpersuasive for the following reasons. As explained in In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2011):
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Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
The field of endeavor is a function of the scope of the claimed invention.
See Bigio, 381 F.3d at 1325-26:
[T]he field of endeavor test . . . for analogous art requires the
PTO to determine the appropriate field of endeavor by
reference to explanations of the invention’s subject matter in
the patent application, including the embodiments, function,
and structure of the claimed invention. See [in re] Wood, 599
F.2d [1032,] 1036 [(CCPA 1979)] (confining the field of
endeavor to the scope explicitly specified in the background of
the invention); see also Deminski, 796 F.2d [436,] 442 [(Fed.
Cir. 1986)] (determining that the cited references were within
the same field of endeavor where they “have essentially the
same function and structure”).
The Deminski court explained that
Deminski’s invention “relates generally to double-acting
high pressure gas transmission compressors,” such as those
used “for transmitting natural gas and other compressible fluids
through pipe lines.” More particularly, the invention is directed
to a horizontally reciprocating, double-acting piston type gas
compressor in which the valves can be removed easily for
replacement.
796 F.2d at 437. Deminski argued that the cited reference are nonanalogous
art because “none of the references . . . is directed to the problem of
removing worn or damaged valves from compressors” and that “the
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examiner and the board defined the problem too broadly by including both
compressors and pumps in the prior art.” Id. at 441. The court disagreed:
Here, the references . . . are “within the field of the inventor’s
endeavor” of horizontally reciprocating, double-acting piston
devices for moving fluids. We agree with the board that the
cited pumps and compressors have essentially the same
function and structure: they move fluids by means of a double-
acting piston, a cylinder, and valves.
Id. at 442.
The electronic organizers taught by Palm and Tungsten satisfy the
“field of endeavor” test for analogous art because the language employed in
the claims is broad enough to permit the claimed combination of elements to
be used in an electronic organizer. Appellant’s reliance (Reply Br. 6) on In
re Klein, 647 F.3d 1343 (Fed. Cir. 2011), is unpersuasive because that case
addresses the “reasonably pertinent to the particular problem test rather than
the “field of endeavor” test for analogous art. See Klein, 674 F.2d at 1348
(“Here, the Board focused exclusively on the ‘reasonably pertinent to the
particular problem’ test.”).
For the foregoing reasons, the rejection of independent claim 1 for
obviousness over Palm and Tungsten is sustained, as is the rejection on this
ground of independent claim 13 and dependent claims 2, 5, and 14, which
are argued as a group along with claim 1. App’t Br. 28-31. See 37 C.F.R.
§ 41.67(c)(1)(vii) (“When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal
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with respect to the group of claims as to the ground of rejection on the basis
of the selected claim alone.”).

D. Obviousness over Palm and Tungsten in view of Sirichai (Claims 3
and 4)
Claims 3 and 4, which read as follows, further describe the recited
“plurality of pins” of the housing’s “quick connector”:
3. The flash memory device according to claim 1 wherein
said plurality of pins is six female pins arranged in two parallel
rows of three pins each.
4. The flash memory device according to claim 3
including a female connector body extending about said pins.
Claims App. (App’t Br. 36).

In rejecting these claims, the Examiner relies on the figure at page 6
of Palm, reproduced below.
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As explained at page 5, this figure shows connecting the HotSync®
cradle/cable to the USB connector of the computer. The Examiner reads the
recited “first interchangeable connector” on this cable, RAN 16, para. 33,
describing it as “a connector having a USB connector at one end.” Id. at 18,
para. 1 (1st occurrence).
The Examiner then relies on Sirichai for a teaching that “USB
connectors and firewire connectors are known equivalents (column 2, lines
41-46).” Id. at 18, para. 2.
Figure 1 of Sirichai is reproduced below.
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Figure 1 is an isometric view of an electrical connector 100 in accordance
with an embodiment of Sirichai’s invention and which comprises a housing
110 containing a light source 120. Sirichai 2:25-28. Sirichai explains that
connector tip 150 can be a USB A or a USB B connector tip or, in another
embodiment, a firewire connector tip, such as a four-pin or a six-pin firewire
connector tip. Id. at 2:43-46.
The Examiner further finds that “[i]in six pin firewire connectors, the
pins are arranged in two parallel rows of three pins each” and that “[i]n
female six pin firewire connectors a female connector body extends around
the six female pins.” RAN 18, paras. 4 and 5.
Based on the above findings, the Examiner concluded that “[o]ne of
ordinary skill in the art could have substituted one known element (firewire
connector) for another (USB connector), and the results of the substitution
would have been predictable.” Id. at 18, para. 3 (2d occurrence).
Appellant argues:
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Sirichai only provides that both USB and firewire connector
tips could utilize the light source disclosed; it does not disclose
that the pin configuration, the wiring scheme required or
operation of the two are equivalent. Simply substituting the
USB connector of Tungsten with the connector body for a
firewire connector will not result in functionality of the
resulting connector.
App’t Br. 32 (emphasis added). This argument is unpersuasive a teaching of
such equivalence is not required to support the rejection under the KSR
rationale that “when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
KSR, 550 U.S. at 416. As explained at MPEP § 2143(B), a rejection for
prima facie obviousness based on this rationale requires the following
findings:
(1) a finding that the prior art contained a device
(method, product, etc.) which differed from the claimed device
by the substitution of some components (step, element, etc.)
with other components;
(2) a finding that the substituted components and their
functions were known in the art; [and]
(3) a finding that one of ordinary skill in the art could
have substituted one known element for another, and the results
of the substitution would have been predictable[.]

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Appellant has not demonstrated that the Examiner erred in determining that
the cited references support such findings regarding the subject matter
recited in claims 3 and 4.
The rejection of claims 3 and 4 for obviousness over Palm, Tungsten,
and Sirichai is therefore sustained.

E. Anticipation by Palm (Claims 15-17)
As explained above, in rejecting claims 1, 2, 5, 13, and 14 for
obviousness over Palm and Tungsten, the Examiner found that Palm’s
internal flash memory is not a “flash memory drive.” RAN 13 and 15, paras.
1 and 25. However, in rejecting claims 15-17 for anticipation by Palm, the
Examiner finds that Palm’s internal flash memory has a “flash memory
drive.” Id. at 19, paras. 1 and 5.
As noted by Respondent, the anticipation rejection of claims 15-17
based on Palm is not discussed in Appellant’s Appeal Brief. Resp’t Br. 9
n.4. The rejection for anticipation by Palm is therefore summarily sustained.
See MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”)

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46
F. Obviousness over DC50 in View of Anderson (Claims 15-17)
Independent claim 15 differs from claim 1 by further specifying, inter
alia, that the flash memory drive is a “fixed internal flash memory drive.”24
Claims App. (App’t Br. 37). The Examiner reads this claim element on the
“internal memory” in DC50 (as opposed to the optional memory card). See
RAN 22, para. 5 (“The flash memory device includes a fixed internal
memory drive (pages 33, 37-39).”). After finding that “DC50 does not
disclose the type of memory used for the internal memory drive” (RAN 25,
para. 31), the Examiner finds that “Anderson’s camera has a fixed internal
flash memory (column 1, line 37)” ( id. at 25, para. 33) and concludes that it
would have been obvious to substitute Anderson’s internal flash memory for
the fixed internal memory in DC50. Id. at 25, paras. 1-3.
Appellant argues that “a review of that specific reference [Anderson]
indicates that the term ‘fixed’ is not used, but assumed by the Examiner” and
that “[t]he assumption made by the Examiner with respect to the term ‘fixed’
is inconsistent with statements made by the Examiner regarding the
interpretation of the Patent Holder’s use of the same term with respect to the
rejection made under 112.” App’t Br. 33. This argument is not understood,
because Appellant has not specifically identified these Examiner statements.
A similar criticism applies to Appellant’s further contention that “the
present interpretation is inconsistent with the Examiner’s arguments in

24 Claim 15 is also narrower than claim 1 in other respects not argued by
(Continued on next page.)
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47
support of the DC50 and [T]ungsten reference with respect to a removable
memory card.” Id.
Appellant’s argument that “[t]he DC50 and Anderson devices are both
cameras” and that “the flash memory device taught by the patent Owner is
clearly not a camera” (id.) is unpersuasive for the reasons given above.
Nor are we persuaded by the argument that “[t]he Examiner has not
articulated a reason why skilled in the art of computer peripherals would
look to the unrelated art of camera electronics to solve the connectivity
problem between different devices to facilitate data transfer.” Id. The
digital cameras of DC50 and Anderson satisfy the “field of endeavor” test
for analogous art because the language employed in the claims is broad
enough to permit the claimed combination of elements to be used in a digital
camera.
The rejection of claim 15 for obviousness over DC50 and Anderson is
sustained, as is the rejection on this ground of dependent claims 16 ad 17,
whose limitations are not separately argued. Id. at 33.

G. Summary of the Dispositions of the Rejections
All of the Examiner’s rejections are sustained.

Appellant in addressing the rejection based on DC50 and Anderson.
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48

III. DECISION
The Examiner’s decision that claims 1-5 and 13-17 of U.S. Patent
6,991,483 are unpatentable over the prior art is affirmed.
Requests for extensions of time by patent owners in inter partes
reexamination proceedings are governed by 37 C.F.R. § 1.956. See also
37 C.F.R. § 41.79(e) (“The times for requesting rehearing under paragraph
(a) of this section, for requesting further rehearing under paragraph (c) of
this section, and for submitting comments under paragraph (b) of this section
may not be extended.”).

AFFIRMED
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For Patent Owner:

BUTZEL LONG
IP DOCKETING DEPT
301 EAST LIBERTY STREET
SUITE 500
ANN ARBOR MI 48104

For Third Party Requester:

NOVAK DRUCE & QUIGG, LLP
1000 LOUISIANA ST.
53RD FLOOR
HOUSTON, TX 77002