Ex Parte Graeber

Patent Trial and Appeal Board

Oct 14, 2014

11814366 (P.T.A.B. Oct. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK GRAEBER
____________

Appeal 2012-007493
Application 11/814,3661
Technology Center 2400
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BRUCE
T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to reading operating data from a
first device to a remote device “even when the power supply of said [first]
device is switched off or broken.” (Spec. 2, ll. 30–32.)

1 According to Appellant, the real party in interest is NXP B.V. (Appeal Br.
2.)
Appeal 2012-007493
Application 11/814,366

2
Claims 1 and 4 are the only independent claims. Claim 1 is
illustrative and is reproduced below:
1. A method of applying operating data of a first device to a
remote device, the method comprising:
storing said operating data in a memory of said first
device during operation of said first device, wherein said first
device and said memory are powered by means of a power
supply;
contactlessly applying said operating data to said remote
device by accessing the memory with the remote device when
said power supply is not available for the first device and the
first device is deactivated.

REJECTIONS
Claims 1–5, 7–10, 16, 17, and 20 are rejected under 35 U.S.C.
§ 103(a)2 as being unpatentable over Wachtfogel (US 2008/0267591 A1,
pub. Oct. 30, 2008), Caulkins (US 2002/0191471 A1, pub. Dec. 19, 2002),
and Yoshimura (US 6,694,106 B2, iss. Feb. 17, 2004).
Claims 1, 2, 4, 5, 8–10, 16, 17, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ha (US 2004/0186879 A1, pub. Sept.
23, 2004), Caulkins, and Yoshimura.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wachtfogel, Caulkins, Yoshimura, and Ryan (US 7,213,766 B2, iss.
May 8, 2007).
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ha, Caulkins, Yoshimura, and Ryan.

2 Now 35 U.S.C. § 103.
Appeal 2012-007493
Application 11/814,366

3
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wachtfogel, Caulkins, Yoshimura, and Ohno (US 2002/0089610 A1,
pub. Jul. 11, 2002).
Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wachtfogel, Caulkins, Yoshimura, and Varma (US
2003/0235250 A1, pub. Dec. 25, 2003).
Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ha, Caulkins, Yoshimura, and Varma.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wachtfogel, Caulkins, Yoshimura, and Trovato (US 6,701,526 B1, iss.
Mar. 2, 2004).
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ha, Caulkins, Yoshimura, and Trovato.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wachtfogel, Caulkins, Yoshimura, and Ayres (US 2003/0078986 A1,
pub. Apr. 24, 2003).
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ha, Caulkins, Yoshimura, and Ayres.
Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ha, Caulkins, Yoshimura, and Park (US 2004/0003631 A1, pub. Jan. 8,
2004).
Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ha, Caulkins, Yoshimura, and Sonnenrein (WO 03/105434 A1,
pub. Dec. 18, 2003).
Appeal 2012-007493
Application 11/814,366

4
ANALYSIS
Claims 1 and 4 are the only independent claims on appeal. Appellant
argues independent claims 1 and 4 together.
Claims 1 and 4 are both rejected under 35 U.S.C. § 103(a) as being
obvious over Wachtfogel, Caulkins, and Yoshimura or, alternatively, over
Ha, Caulkins, and Yoshimura.
Claim 1 recites “contactlessly applying said operating data to said
remote device by accessing the memory with the remote device when said
power supply is not available for the first device and the first device is
deactivated.”
The Examiner cites Wachtfogel and, alternatively, Ha, as disclosing
“a method of applying operating data of a first device to a remote device
. . . .” 3 (Answer 5 & 11.)
Wachtfogel generally relates to the use of personal video recorders
(PVRs) and transferring program folders (with “operating data”) wirelessly
from a base PVR (a first device) to a remote PVR. (Answer 5.)
The Examiner cites Yoshimura as disclosing that memory devices can
be powered and data transferred by contactless connections. (Answer 7.)
Yoshimura generally relates to using a contactless interface to power a
memory in a cartridge in a printer and to sharing data from that memory
with other parts of the printer. (Yoshimura, col. 7, ll. 35–59 and Fig. 3.)
Yoshimura does not discuss doing this when the printer is not powered.

3 To avoid unnecessarily complicating our analysis, we do not further
discuss Ha. However, nothing in Ha changes our analysis.
Appeal 2012-007493
Application 11/814,366

5
The Examiner cites Caulkins as disclosing that where a device and its
memory are normally powered by a power supply, it is known to have “a
backup power source when said power supply is not available for the device
and the device is deactivated.” (Answer 6.)
Caulkins generally relates to using volatile memory for long term data
storage without data loss by connecting the volatile memory to a battery
backup in the event of a loss of commercial power. (Caulkins ¶ 23.)
In short, Caulkins discloses using a battery backup to keep volatile
memory powered in a device when normal power is lost. Yoshimura
discloses providing normal power to a memory via a contactless connection.
Wachtfogel discloses a system that wirelessly transfers data from a base
device to a remote device.
The Examiner states that neither Wachtfogel nor Caulkins discloses
“using a contactless power source for backup . . . .” (Answer 9.) The
Examiner further states that “Yoshimura discloses using contactless power
source [sic] to operate the system . . . when the main power supply is not
available for the device that hosts the memory . . . .” (Id., emphasis added.)
The Examiner concludes (id., emphasis added) that
[o]ne of ordinary skill in the art at the time the invention was
made would have been motivated to incorporate the teachings
of Yoshimura into remote device [sic] in the method taught by
Wachtfogel and Caulkins in order to facilitate the powering of
the system by using a power source that is contactless thus
eliminating the necessity of using wires for connection.

The Examiner does not explain what would be powered in a
Wachtfogel system in view of Caulkins. However, because the Examiner
describes powering “the system,” we understand this to mean powering both
Wachtfogel’s base PVR and remote PVR. Appellant appears to have
Appeal 2012-007493
Application 11/814,366

6
reached the same conclusion and thus argues that the Examiner has
improperly ignored the “first device is deactivated” claim language. (Reply
Br. 2.)
Alternatively, the Examiner argues (Answer 24–25):
Caulkins teaches that when a power supply becomes
unavailable . . ., thus making the device deactivated, to maintain
the availability of the data, another source of power is used (see
at least paragraph [0055]).” . . . Yoshimura teaches a source
of power without using a power supply is a contactless power
source to access data in a memory (see at least column 7, lines
35-53). Therefore, the motivation to incorporate the teachings
of Yoshimura so that instead of using a battery, contactless
memory is used to take advantage of the power supply that is a
voltage induced in a receiving antenna electromagnetically by
the electromagnetic field of carrier waves emitted from the
contactless transceiver thus saving the cost of buying separate
batteries for power back up.

Appellant argues that “the Examiner’s supposed motivation of ‘saving
the cost of buying separate batteries’ makes no sense in the context of
Caulkins.” (Reply Br. 2.) Although adding Yoshimura to Wachtfogel and
Caulkins might make the battery backup connections wireless, the Examiner
does not explain how this would change what is powered or how it would
result in the base PVR being deactivated.
Appellant further argues that the Examiner relies on “a conclusory
statement lacking articulated reasoning” and that the Examiner does not
present “a prima facie case of obviousness . . . .” (Id.)
We also do not see the Examiner’s reasoning as to how Yoshimura
and Caulkins provide a rationale for keeping Wachtfogel’s base PVR
deactivated while providing a wireless data connection between the base and
remote PVRs.
Appeal 2012-007493
Application 11/814,366

7
We agree with Appellant that the Examiner has not made a prima
facie case of obviousness. Both independent claims have similar limitations.

DECISION
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103(a) is
reversed.

REVERSED

mls