Ex Parte Marshall

Board of Patent Appeals and Interferences

Jan 21, 2009

10407021 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER I. MARSHALL
____________

Appeal 2009-0072
Application 10/407,021
Technology Center 2600
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Decided: January 21, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and KARL D.
EASTHOM, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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STATEMENT OF THE CASE
Appellant invented a digital or host device, such as a camera,
with a removable storage module. The storage module is available to
other devices through a wireless interface and network without
removal of the module from the host device. Given this arrangement,
the stored data is immediately available to other devices through the
network.1 Independent claim 1 is reproduced below:
1. A removable wireless storage module comprising:
a digital memory for storing digital data;

a radio antenna;

radio interface electronics coupled to said antenna and
said digital memory;

a web server; and

host interface electronics for coupling said digital
memory to a digital host device which can supply electrical
power to said module and which can produce digital data which
can be stored in said digital memory;

wherein said digital memory is also accessible by radio
wireless device independently of said digital host device, by
means of said radio antenna and said radio interface electronics.

The Examiner relies upon the following as evidence in support of the
rejection:
Parry US 2002/0128875 A1 Sep. 12, 2002
Zer US 2004/0103234 A1 May 27, 2004
(filed Nov. 21, 2002)

1 See generally Spec. 1:4-7, 3:5-13, and 6:5-30.
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Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zer and Perry.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments, which Appellant could have made but did not make
in the Brief, have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellant groups the arguments according to the following: (1) claims
1 and 5; (2) claims 2 and 3; (3) claim 4; (4) claim 6; and (5) claim 7 (Br. 3-
11). Each group will be addressed separately.

Claims 1 and 5
Regarding representative independent claim 1,3 the Examiner finds
the combination of Zer and Parry discloses all the limitations in claim 1,
including the storage module having a web server and the memory being
accessible by radio wireless device independent of the digital host device
(Ans. 3). Appellant argues that: (1) Zer fails to disclose the limitation “said
digital memory is also accessible by radio [sic] wireless device
independently of said digital host device” in claim 1; (2) Parry fails to teach
placing a web server as an element of a “removable wireless storage
module” as recited in claim 1; and (3) there is no motivation to combine the
teachings of Parry with Zer (Br. 3-10).

2 Throughout this opinion, we refer to (1) the Appeal Brief filed June 7,
2007 and (2) the Examiner’s Answer mailed August 30, 2007.
3 Appellant groups claims 1 and 5 (Br. 3 and 10). Accordingly, we select
independent claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii).
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ISSUES
The following issues have been raised in the present appeal:
(1) Has the Appellant shown that the Examiner erred in finding Zer
discloses the limitation, “digital memory is also accessible by radio [sic]
wireless device independently of said digital host device,” in rejecting claim
1 under § 103?
(2) Has the Appellant shown that the Examiner erred in finding Parry
teaches including a web server on Zer’s removable wireless storage module
in rejecting claim 1 under § 103?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Zer discloses a system that includes a host device 31 (e.g., PDA or
cellular phone), a removable storage module 35 having memory 103
for storing data, and radio wireless communication 41 between the
memory 103 and a communication system or local area network
(LAN) 39 (Zer, ¶¶ 19, 22, 41, 42, and 44; Figs. 1 and 5).
2. Zer discusses direct memory access (DMA) data transfer from LAN
39 to memory 103. Zer discloses DMA data transfer is initiated by
the host device 31 or the initial transfer of data begins with a signal
from the host. The data “is transferred to memory 103 directly
through controller 101’ without use of SD bus 43 . . . [o]nce the host
instructs the card to perform the transfer, SD bus 43 is idle . . . and the
process is performed independently of the host” (Zer, ¶¶ 35 and 42).
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3. Zer discloses during DMA data transfer data is transferred directly
between LAN 39 and memory without involvement or data transfer
limitations from the host system 31. This function is performed
entirely by the memory card (Zer, ¶ 27).
4. Zer states the host’s initial and minimal involvement with the data
transfer permits the host device to perform other activities while the
“input-output and memory module transfer data amongst themselves”
(Zer, ¶ 8).
5. Parry discloses an electrical device (e.g., 102 with a digital video
camera 210) having a memory module for customer support access
(Parry, ¶ 6, 7, 19, and 20; Figs. 1 and 2).
6. Parry teaches including a web server module 224 on a computer
readable medium, including computer diskettes and CDROMs (Parry,
¶¶ 27-29).
7. Parry explains that the web server module 224 can be software,
firmware, or a combination of software and firmware and is placed on
the computer readable medium in order to collect and format setting
and status information and make the information available and
accessible to customer support (Parry, ¶¶ 21 and 22).
8. Zer describes the socket 33 as a location for inserting and removing
memory card 35 and that the socket can be built into or physically
separate from host 31 (Zer, ¶ 19; Fig. 1).
9. Zer discloses contacts 13, 14, and 16 of the memory card 35 are
connected to power (VSS, VDD, and VSS2) when the card 35 is inserted
into the socket 33 (Zer, ¶ 21).

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PRINCIPLES OF LAW
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727
(2007), explains:
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve 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. Sakraida [v. AG Pro, Inc., 425 U.S. 273 (1976)]
and Anderson's-Black Rock[, Inc. v. Pavement Salvage Co.,
396 U.S. 57 (1969)] are illustrative—a court must ask whether
the improvement is more than the predictable use of prior art
elements according to their established functions.
KSR, 127 S. Ct. at 1740.
One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).

ANALYSIS
Zer discloses a system that includes a removable wireless storage
module 35 having memory 103 for storing data and radio wireless
communication 41 between the memory 103 and a radio wireless device
LAN 39 (FF 1). In particular, Zer discusses DMA data transfer from the
LAN 39 or a radio wireless device to digital memory 103 (FF 2). Zer states
the data “is transferred to memory 103 directly through controller 101’
without use of SD bus 43 . . . [o]nce the host instructs the card to perform
the transfer, SD bus 43 is idle . . . and the process is performed
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independently of the host.” (Id.) As the bus 43 between the host device 31
and card 35 (which includes memory 103) is idle during this data transfer
(id.), there is no communication between the LAN 39 and the host device
31, and the data transfer is independent of the host device 31.
Moreover, Zer’s DMA data transfer is performed entirely by the
memory card and without the host’s involvement (FF 3). Zer also discloses
the host device 31 does not limit the data transfer directly with the memory.
(Id.) Zer even describes the host’s initial involvement with the data transfer
between memory 103 and a radio wireless device 39 permits the host device
31 to perform other activities while the “input-output and memory module
transfer data amongst themselves” (FF 4). Zer, therefore, discloses the
independence of the DMA data transfer from the host 31 and that the digital
memory 103 is accessible by a radio wireless device 39 independent of the
host device 31 as required by claim 1.
We acknowledge Zer discloses the data transfer is initiated by the host
device 31 or the initial transfer of data begins with a signal from the host (FF
4). However, once initiated, the data transfer is entirely independent of the
host device (FF 2 and 3). Also, the breadth of the claim 1 and its open-
ended “comprising” transitional phrase do not exclude the prior art from
disclosing occasions when the host is involved in data transfer, while
disclosing on other occasions, the digital memory can be accessed by a radio
wireless device independent of the host device. Appellant further states that
the embodiment in the Specification describing the host as being entirely
unaware of the data transfer is illustrative and not intended to be a limitation
of the claim (Br. 3 and 5). Thus, based on the above and given Appellant’s
statements that the phrase, “independently,” is not intended to be limited to
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the embodiments in the Specification, we also will not import any particular
limitations of the illustrative embodiment, including that the host is entirely
unaware of data transfer into claim 1.
Appellant next argues that Parry does not teach a removable wireless
storage module or memory card with a web server (Br. 6-7). We initially
note that claim 1 recites a removable storage module and not a memory card.
Parry teaches that the web server module 224 can be placed on a computer
readable medium (FF 6). While a computer diskette is one example of the
computer readable medium, Parry has not excluded other types of media.
(Id.) Thus, Parry’s disclosure teaches other computer readable medium,
including removable storage devices. (Id.)
Furthermore, the obviousness rejection is based on the combination of
Zer and Parry and not Parry alone. As stated previously, Zer discloses a
removable storage module 35 (FF 1). Parry discloses a reason for including
a web server module on a memory module, including the memory module
103 of Zer’s removable storage device 35, in order to collect information
that can later be used and accessed by customer support for isolating
problems (FF 5 and 7). Based on this teaching, one skilled in the art would
have recognized the benefits of including a web server module on the Zer
removable wireless storage module 35 in order to collect information that
can later be made available and accessible to customer support. Thus,
contrary to Appellant’s assertions (Br. 8-10), Parry provides ample
motivation for the proposed combination with Zer, and attacking Parry alone
will not demonstrate nonobviousness. See Merck, 800 F.2d at 1097.
Lastly, Appellant contends that Parry does not disclose a web server
stored on the computer readable medium but rather software used to
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implement the web server is stored on the computer readable medium (Br.
7). We are not persuaded by this argument. First, claim 1 call for “a web
server” and does not limit this server to include hardware components.
Thus, the web server can include software or firmware, as disclosed by Parry
(FF 8). Second, there is no limitation in claim 1 that the web server is
implemented on the removable storage module, as Appellant contends (Br.
7-8). Thus, the claim only requires the removable storage device has a web
server. As stated above, Parry teaches the web server limitation and
provides ample motivation for combining with Zer.
For the foregoing reasons, we will sustain the obviousness rejection of
claim 1 over Zer and Parry and claim 5, which falls with claim 1.

Claims 2 and 3
Representative claim 24 recites a cradle for receiving the removable
wireless storage module and includes an electrical power source capable of
being coupled to receive a power supplying module. The Examiner relies on
the card socket 33 of Zer and its related descriptive portions to meet the
above recitations (Ans. 4). Appellant argues that the card socket 33 is
distinct from a cradle and does not include an electrical power supply as
recited (Br. 10). The issue before us, therefore, is whether Appellant has
shown the Examiner erred in finding Zer discloses a cradle having a source
of electrical power in rejecting claim 2 under § 103.
Claim 2 does not recite any specific structure of the cradle. The
cradle shown in Figure 5 of the Specification and its structure will, therefore,

4 Appellant groups claims 2 and 3 (Br. 10). Accordingly, we select
independent claim 2 as representative. 37 C.F.R. § 41.37(c)(1)(vii).
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not be imported into claim 2. Moreover, Zer describes the socket 33 as a
location for inserting and removing a memory card and can be built in or
physically separate from the host 31 (FF 8). This socket or mechanism for
receiving a memory card 35 thus acts as a holder or cradle for receiving a
removable wireless storage device.
Zer also discloses the socket 33 includes a source of power (VSS, VDD,
and VSS2) to the memory card 35 when card 35 is inserted into the socket or
cradle 33 (FF 9). This source of power can be coupled to a received module
or card 35 to supply power to the module. (Id.) As Zer supplies power to
the removable wireless storage module 35 through the cradle 33, Zer
discloses the cradle 33 includes a source of electrical power as broadly
recited in claim 2.
For the above reasons, Appellant has not shown the Examiner erred in
rejecting claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over
Zer and Parry.

Claim 4
Claim 4 recites the cradle includes a communication interface. The
Examiner finds that Zer discloses this feature (Ans. 4). Appellant repeats
the argument that Zer’s socket 33 is not a cradle (Br. 10). We are not
persuaded by these arguments, however, for the reasons previously
discussed in connection with claim 2.
For the above reasons, Appellant has not shown the Examiner erred in
rejecting claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Zer
and Parry.

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Claim 6
Claim 6 recites a digital camera system having a digital camera, a
removable wireless storage module, a digital memory, a digital host camera
interface electronics for coupling the memory to the camera, and a wireless
internet system coupled to the digital memory for effecting access to the
digital memory by a network wireless device independently of the digital
camera. The Examiner finds the combination of Zer and Parry teaches the
limitations of claim 6 (Ans. 5-6). Appellant argues that neither Zer nor
Parry teaches the limitation “a wireless internet system coupled to the digital
memory for effecting access to said digital memory by a network wireless
device independently of said digital camera” as recited in claim 6. We are
not persuaded for the reasons previously stated with respect to claim 1 and
the teachings of Zer. Additionally, while Zer discloses the host device can
be a cellular phone (FF 1), which may have a camera, Parry explicitly
teaches the host device can also include a digital camera to assist the
customer service representative (FF 5 and 7). Thus, we also find such
arguments fall well short of rebutting the Examiner’s well-reasoned
obviousness rejection.
For the above reasons, Appellant has not shown the Examiner erred in
rejecting claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Zer
and Parry.

Claim 7
Claim 7 recites the wireless internet system includes a radio antenna,
radio interface electronics coupled to the antenna and the digital memory
and the web server. The Examiner finds the combination of Zer and Parry
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meets the limitations of claim 7 (Ans. 6). Appellant argues neither Zer nor
Parry alone or in combination discloses, teaches, or suggests a wireless
internet system with a web server (Br. 11). We are not persuaded by this
argument for the reasons previously discussed with respect to claim 1 and
the teachings of Parry.
For the above reasons, Appellant has not shown the Examiner erred in
rejecting claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Zer
and Parry.

CONCLUSION
(1) The Appellant has not shown that the Examiner erred in finding Zer
discloses the “digital memory is also accessible by radio[sic] wireless device
independently of said digital host device,” in rejecting claim 1 under § 103
or “a wireless internet system coupled to said digital memory for effecting
access to said digital memory by a network wireless device independently of
said digital camera” in rejecting claim 6 under § 103.
(2) The Appellant has not shown that the Examiner erred in finding Parry
teaches including a web server on Zer’s removable wireless storage module
or a wireless internet system in rejecting claims 1 and 7 respectively under
§ 103.
(3) The Appellant has not shown the Examiner erred in finding Zer
discloses a cradle having a source of electrical power in rejecting claim 2
under § 103.

DECISION
The decision of the Examiner to reject claims 1-7 is affirmed.
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No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD

THOMAS H. CLOSE
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201
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