Ex Parte Narendra et al

Patent Trial and Appeal Board

Jul 29, 2016

12188382 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/188,382 08/08/2008
35781 7590 08/02/2016
Tyfone, Inc.
Patent Dept.
5331 SW Macadam A venue
Suite 251
Portland, OR 97239
FIRST NAMED INVENTOR
Siva G. Narendra
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.
ll5.023US1 4917
EXAMINER
BUGG, GEORGE A
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
tlippara@gmail.com
dana.lemoine@tyfone.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIVA G. NARENDRA, PRABHAKAR TADEP ALLI,
and SAURA V CHAKRABORTY
Appeal2015-001162
Application 12/188,382
Technology Center 2600
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants 1 seek review under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Rejection of claims 1-8, 10-12, and 15-17.2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Tyfone, Inc. Br. 1.
2 Claims 9, 13, 14, 18, and 19 have been cancelled.
Appeal2015-001162
Application 12/188,382
Invention
The claims are directed to powering a radio frequency identification
(RFID) card using commands sent to the RFID card. Abstract.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. A method performed by a device having a memory card
compatible add-on slot that is powered down after periods of
inactivity to save power, the method comprising periodically
sending memory card write commands to the memory card
compatible add-on slot for the purpose of maintaining
uninterrupted power to the memory card slot.
Applied Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
-----1 ~~-dJJiJC:dl l~.
Moseley us 5,212,478 May 18, 1993
Fukuoka US 2004/0065733 Al Apr. 8, 2004
Mizushima US 2004/0162932 Al Aug. 19, 2004
Brown US 2004/0177045 Al Sept. 9, 2004
Shanmugasundaram US 2004/0243785 Al Dec. 2, 2004
Nishizawa US 2005/0052924 Al Mar. 10, 2005
Roesner US 2005/0057341 Al Mar. 1 7, 2005
Rommelmann US 6,952, 788 B2 Oct. 4, 2005
Lo US 2006/0047982 Al Mar. 2, 2006
Ibi US 2006/0077039 Al Apr. 13, 2006
Yeager US 2006/0279413 Al Dec. 14, 2006
Yamada JP 2007 328689 A Dec. 20, 2007
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Application 12/188,382
REJECTIONS
The Examiner made the following rejections:
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishizawa and Mizushima. Non-Final Act. 2--4.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishizawa, Mizushima, and Ibi. Id. at 4--5.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishizawa, Mizushima, and Fukuoka. Id. at 5---6.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishizawa, Mizushima, and Roesner. Id. at 6-8.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishizawa, Mizushima, and Yeager. Id. at 8-9.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizushima, Shanmugasundaram, and Ibi. Id. at 9-11.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizushima, Shanmugasundaram, Lo, and Yeager. Id. at
11-12.
Claims 10 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizushima, Moseley, and Brown. Id. at 12-15.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizushima, Moseley, Brown, and Nishizawa. Id. at 15-
16.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizushima, Moseley, Brown, and Yamada. Id. at 16-17.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moseley, Lo, and Mizushima. Id. at 17-19.
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Appeal2015-001162
Application 12/188,382
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moseley, Lo, and Mizushima, and Rommelmann. Id. at
20.
ANALYSIS
Claims 1-5
Appellants contend the Examiner erred in rejecting independent claim
1 because the combination ofNishizawa and Mizushima does not teach or
suggest "periodically sending memory card write commands to a memory
card compatible add-on slot for the purpose of maintaining uninterrupted
power to the memory card slot," as recited in the claim. Br. 8-9. Appellants
assert that Nishizawa's "two external terminals for power delivery" and
Mizushima's "memory card that receives standard memory commands and
secure write commands" do not periodically send memory card write
commands to a memory card compatible add-on slot for the purpose of
maintaining uninterrupted power to the memory card slot. Id. at 9.
The Examiner finds, however, and we agree, Nishizawa teaches
sending write commands to flash memory. Ans. 23 (citing Nishizawa i-f 77).
The Examiner further finds (id. at 23-24), and we agree, Mizushima teaches
"a function in which power is sent by way of the power supply terminal to
the IC chip 150 when a secure write command from the host device 160 is
received by the memory card" (Mizushima i-f 26). Appellants' arguments do
not persuasively explain why the write commands Nishizawa and
Mizushima transmit fail to teach the disputed limitation. Rather, Appellants
merely recite the claim limitation, describe what the references teach in
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Appeal2015-001162
Application 12/188,382
general, and then assert the reference does not teach the disputed limitation.
See Br. 8-9.
Furthermore, the Examiner's reason to combine is supported by
rational underpinning-improving power consumption in a memory card
(Ans. 32}-and Appellants' assertions do not persuasively explain why the
Examiner's motivation to combine is improper (see Br. 14).
Accordingly, we are not persuaded the Examiner erred in finding the
combination ofNishizawa and Mizushima teaches or suggests "periodically
sending memory card write commands to a memory card compatible add-on
slot for the purpose of maintaining uninterrupted power to the memory card
slot," within the meaning of claim 1.
Appellants have not presented separate, substantive, persuasive
arguments with respect to claims 2-5, which depend directly or indirectly
from claim 1. See Br. 8-9, 14. For the reasons set forth above, we also
sustain the Examiner's rejections of claims 2-5. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claims 6--8, 10--12, and 15-17
Appellants contend the Examiner erred rejecting independent claims
6, 10, and 16, because Mizushima does not teach or suggest:
wherein embedding a hidden command within a memory card
write command comprises including a data string within a data
field of the memory card write command to identify the memory
card write command as a hidden command, and including a
command index within the data field of the memory card write
command to identify the type of hidden command,
as recited in claim 6 and similarly recited in claims 10 and 16. Br. 10-13.
Appellants argue that using frames to transmit commands does not teach
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Appeal2015-001162
Application 12/188,382
using a data string to identify a hidden command and a command index to
identify the type of hidden command. Id.
The Examiner finds Mizushima teaches secure write commands
having embedded commands. Ans. 25-27; Non-Final Act. 9-10 (citing
Mizushima i-f 26). The Examiner also finds that commands can be
transmitted in frames including a frame identifier. Non-Final Act. 10.
However, the Examiner does not explain why the identification of frames
would have led one of ordinary skill in the art to use a command index to
identify a command type. See Non-Final Act. 10; see also Ans. 25-27.
Accordingly, based on this record, we do not sustain the Examiner's
§ 103 rejection of independent claims 6, 10, and 16 and claims 7, 8, 11, 12,
15, and 17 which depend directly or indirectly from claims 6, 10, or 16.
Because we do not sustain the Examiner's § 103 rejection of claims 6-8, 10-
12, and 15-17 on this issue, we do not reach the merits of Appellants'
remaining arguments regarding those claims. See Br. 9-12, 14--17.
DECISION
We AFFIRM the Examiner's 35 U.S.C. § 103 rejection of claims 1-5.
We REVERSE the Examiner's 35 U.S.C. § 103 rejection of claims 6-
8, 10-12, and 15-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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