Ex Parte Jones et al

Patent Trial and Appeal Board

Dec 14, 2015

13451275 (P.T.A.B. Dec. 14, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/451,275 04/19/2012
73481 7590 12/21/2015
Alliacense Limited LLC
4880 Stevens Creek Boulevard
Suite 103
San Jose, CA 95129
FIRST NAMED INVENTOR
Larry Lawson Jones
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
76706-201002-Cl 9097
EXAMINER
CLEARY, THOMAS J
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
12/21/2015 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):
emi@alliacense.com
ip@alliacense.com
ned@alliacense.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY LAWSON JONES, SREENATH MAMBAKKAM, and
AROCKIY ASW AMY VENKIDU
Appeal2014-001126
Application 13/451,27 5
Technology Center 2100
Before CAROLYN D. THOMAS, JESSICA C. KAISER, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 14--20, 22-31, 33, and 34, all the pending claims in
the present application. Claims 1-13, 21, and 32 are canceled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
The present invention relates generally to flash-memory readers, and
more particularly to interfacing several different types of flash-memory
cards to a personal computer. See Spec. i-f 2.
Appeal2014-001126
Application 13/451,275
Claim 14 is illustrative:
14. A flash memory card reader, comprising:
at least two flash memory card connectors, at least one
flash memory card connector configured for serial data transfer and at
least one flash memory card connector configured for parallel data
transfer; and
a single-chip converter comprising:
a serial I/O circuit configured for serial data transfer, the
serial I/O circuit supporting multiple serial data transfer modes;
a parallel I/O circuit configured for parallel data transfer;
and
a general purpose input output circuit configured to
communicate control signals to and from said at least two memory
card connectors.
Appellants appeal the following rejections:
RI. Claims 14--20, 22-31, 33, and 34 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Iwasaki (US 6,002,605, Dec. 14, 1999)
and Applicants' Admitted Prior Art (hereinafter AAPA) as evidenced by the
"SD-Memory Card Specification" Version 0.96 (hereinafter SD
Specification) (Final Act. 5-11 ); and
R2. Claims 14--19, 24, 25-30, and 34 are rejected under the ground of
non-statutory obviousness-type double patenting as being unpatentable over
various claims of various patents (see Final Act. 13-14) in view AAPA as
evidenced by SD Specification (id.).
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Application 13/451,275
ANALYSIS
Claims 14-20, 22-31, 33, and 34
Issue: Did the Examiner err in finding that the SD Specification was
publicly accessible?
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to the Appellants'
arguments. We concur with Appellants' conclusion that the Examiner erred
in finding that one of the references cited, i.e., the SD Specification, was
publicly accessible.
As identified by Appellants, "the [E]xaminer continued to rely on the
SD preliminary specification, version 0.96, regardless that it was marked
confidential and despite the testimony of the Executive Director [Moyer]
that it was confidential" (App. Br. 9). Appellants further contend that
Executive Director Moyer further indicated "that members of the
Association were required to keep the specification confidential and that
confidential specifications were available only through a secure website" (id.
at 10). In other words, according to Appellants, not only was every page of
the SD Specification marked confidential, but the members of the
Association that received the SD Specification were under a legal obligation
of confidentiality.
The Examiner finds the SD Specification is prior art because it is a
printed publication with a publication date of January 2000 (Ans. 13). As
the Examiner acknowledges (id.), to qualify as a printed publication, a
reference must be publicly accessible prior to the critical date. "A reference
is publicly accessible upon a satisfactory showing that such document has
been disseminated or otherwise made available to the extent that persons
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Application 13/451,275
interested and ordinarily skilled in the subject matter or art exerc1smg
reasonable diligence, can locate it." SRI Int'!, Inc. v. Internet Sec. Sys. Inc.,
511F.3d1186, 1194 (Fed.Cir.2008) (citation omitted). A reference,
however, may not be publicly accessible if the distribution of the document
is limited with restrictions placed on distribution. See N. Telecom, Inc. v.
Datapoint Corp., 908 F.2d 931, 936 (Fed. Cir. 1990).
Here, Appellants have shown that the SD Specification was marked
CONFIDENTIAL and "Preliminary" on each page of the Specification (see
SD Specification; App. Br. 6, 8-9). The Examiner has not sufficiently
shown that despite these indicia, the SD Specification was nevertheless
publicly accessible.
In finding the SD Specification was publicly accessible, the Examiner
relies on statements on the SD Group's website regarding that group's
Simplified Specifications and the lack of a confidentiality statement in the
SD Specification itself (Final Act. 3--4). As Appellants point out (see App.
Br. 8-9), the Examiner did not show that the statements on the SD Group's
website applied to preliminary specifications. We also observe that the lack
of an explicit confidentiality statement does not show that the SD
Specification was indeed disseminated or otherwise made available so that
interested persons could locate it.
The Examiner further relies on the testimony of Mr. Moyer in an
International Trade Commission investigation (see Ans. 14--16; Adv. Act. 2
(mailed Feb. 1, 2013); Adv. Act. 2 (mailed Apr. 23, 2013)). However, the
Examiner finds "Mr. Moyer never indicates with certainty that the 0.96
Specification was or was not made publicly available" and "Mr. Moyer's
personal knowledge of behavior of the SD Card Association and thus the
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Application 13/451,275
publication or non-publication of specifications did not begin until July
2011" (see Ans. 14). Mr. Moyer's testimony thus would appear to have
little weight concerning whether a preliminary specification was publicly
available in 2000, more than a decade earlier.
Even considering Mr. Moyer's testimony about the SD Group's
current practices (as of 2013), however, we find that testimony does not
sufficiently show public accessibility of the SD Specification. The
Examiner finds that "[i]n the instant scenario the 0.96 Specification was
made available to those persons of ordinary skill in the art (e.g. memory card
technology manufactures and researchers) at a cost of membership to the
SD Association and the information therein was easily comprehended
without further research or experimentation" (see Ans. 16). We find that
such comments by the Examiner fail to consider whether the confidentiality
agreements (or the nondisclosure agreements for researchers) may have
negated any suggestion that the reference was publicly accessible. Instead,
the Examiner merely focuses on how easy it is to join the SD Card
Association or get a licence agreement. While such information may be
relevant to determining the portion of the public interested in the subject
matter described in the document, we find the Examiner has not shown the
SD Specification was publicly accessible because even under current
practices, any persons receiving copies of the SD Specification were
obligated to keep it in confidence. We agree with Appellants that "[b ]ecause
a member of the public can join an organization does not mean that its
confidentiality information ipso-facto become public knowledge[, as] [t]he
employee normally will [still] have legal obligations of confidentiality" (see
App. Br. 11 ).
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The Federal Circuit has indicated"[ w ]e have held that where a
distribution is made to a limited number of entities, a binding agreement of
confidentiality may defeat a finding of public accessibility." Cordis Corp. v.
Boston Scientific Corp., 561 F.3d 1319, 1333 (Fed. Cir. 2009). Here, the
Examiner fails to even dispute that under current practices, there was a
binding agreement of confidentiality. Furthermore, the record here contains
clear evidence that the SD Card Association norms gave rise to an
expectation that disclosures, particularly those marked "Confidential",
would remain confidential. In addition, there is no evidence that commercial
entities would have distributed, or in fact did distribute, the SD
Specification. There is also no showing by the Examiner that similar
documents in the past became available to the public as a result of
individuals becoming members of the SD Card Association.
We disagree with the Examiner's finding that "Appellants' argument
regarding employee confidentiality is contradicted by the testimony of Mr.
Moyer which indicates that anyone can get a copy of the specification if they
are a licensee or a member or they sign a nondisclosure agreement (for those
utilizing the specification for research purposes)" (see Ans. 16), because Mr.
Moyer's testimony related to current practices (as of 2013) and is consistent
with and clearly emphasizes that under those practices, there are restrictions
to receiving the similar specifications, such as signing a nondisclosure
agreement (for research purposes) and being a member or licensee with an
imposed confidentiality agreement (see Ans. 15). In other words, all those
receiving similar specifications under current practices appeared to be under
a legal obligation of confidentiality. The Examiner's findings do not dispute
that a confidentiality agreement would have existed.
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Thus, based on the record before us, we find that the Examiner has not
shown that the SD Specification was publicly accessible. Therefore, the SD
Specification is disqualified as prior art.
Given that the Examiner's 35 U.S.C. § 103(a) rejection and the
Double Patenting rejections noted supra incorporate the now disqualified SD
Specification as a basis thereto, we will not sustain the Examiner's
obviousness rejection of claims 14--20, 22-31, 33, and 34; and we will not
sustain the Examiner's nonstatutory obviousness-type double patenting
rejections of claims 14--19, 24, 25-30, and 34.
DECISION
The decision of the Examiner to reject claims 14--20, 22-31, 33, and
34 is reversed.
REVERSED
JRG
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