Ex Parte Roslak et al

Board of Patent Appeals and Interferences

Jan 22, 2009

10155602 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS K. ROSLAK, DOMINICK SALVATO,
MICHAEL SASLOFF, ANDREW M. DOORTY,
and CHARLES S. BOLEN
__________

Appeal 2008-2629
Application 10/155,602
Technology Center 2100
__________

Decided: January 22, 2009
__________

Before LANCE LEONARD BARRY, JAY P. LUCAS, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-10, 22-30, 33, 34, 36, and 37. Claims 11-
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21, 31, 32, 35, and 38 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
The Invention
The disclosed invention relates generally to a presentation system for
a programmable digital assistant (PDA) device (Spec. 1). Specifically, an
accessory contains an accessory connector that mates with a docking
connector on a PDA device. The accessory acts as a host to the PDA device
for receiving display data for the PDA device (id.).
Independent claim 1 is illustrative:
1. A system that enhances the interfacing capability of a
personal digital assistant (PDA), comprising:

an accessory that receives and reads data from a flash memory
card, the PDA fitted within the accessory;

an accessory connector that mates with a docking connector;

an interface controller connected to the accessory connector, the
interface controller receives data from the PDA;

a microcontroller that determines that data from one of the flash
memory card and the PDA is to be displayed based at least in part
upon a control signal from the PDA;

a video controller that receives display data from the interface
controller and generates video display signals; and

a video output connector that provides the video display signals
to a display.

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The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Nakamura US 2001/0029588 A1 Oct. 11, 2001
McElhattan US 6,442,639 B1 Aug. 27, 2002
(filed Apr. 19, 2000)
Knockeart US 6,622,083 B1 Sep. 16, 2003
(filed Jun. 1, 2000)
Carnahan1 US 2004/0230668 A1 Nov. 18, 2004
(filed Jan. 28, 2004)

The Rejections
1. The Examiner rejects claims 1-5 under 35 U.S.C. § 103(a) as being
unpatentable over Knockeart and Carnahan/Ahern.
2. The Examiner rejects claims 6, 7, 10, 22-30, 33, 34, and 36 under
35 U.S.C. § 103(a) as being unpatentable over Knockeart,
Carnahan/Ahern and Nakamura.
3. The Examiner rejects claims 8, 9, and 37 under 35 U.S.C. § 103(a) as
being unpatentable over Knockeart, Carnahan/Ahern and McElhattan.

1 Carnahan is a continuation-in-part and claims priority to Ahern, US Serial
No. 09/559,678, filed Apr. 27, 2000 (“Ahern”).
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ISSUE #1
Appellants assert that “Knockeart et al. fails to disclose or suggest an
accessory that receives and reads data from a flash memory card, and an
accessory connector that mates with a docking connector” (App. Br. 5).
The Examiner finds that “the docking station 290 does in fact equate
to the claimed ‘accessory’” (Ans. 11-12).
Did Appellants demonstrate that the Examiner erred in finding that
Knockeart or Carnahan/Ahern discloses an accessory that receives data from
a flash memory card and having a connector that mates with a docking
connector?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Knockeart discloses that an “[i]n-vehicle system 105 is configured to
use a removable personal device 160” (col. 4, ll. 32-33).
2. The in-vehicle system of Knockeart “provides a way of coupling
removable personal device 160 to on-board computer 210” and
contains a docking station that “provides a communication path
between the removable personal device and the on-board computer”
(col. 6, ll. 29-31, 35-37).
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3. Knockeart discloses that the on-board computer has “[s]tatic storage
222 [that] can . . . be a . . . solid state storage device such as a flash
memory” (col. 5, ll. 61-63).
4. Carnahan discloses “universal connectivity stations . . . each having a
plurality of interface ports 24” (¶[0036]) to which a “plurality of
interconnecting and interactive devices are communicably coupled”
(¶[0037]).
5. Ahern discloses a “plurality of interconnecting and interactive
devices are communicably coupled to each UCS 22” (page 12).
6. Carnahan and Ahern disclose that the Universal Connectivity Station
(UCS) is connected to a “data module 30 . . . [that] can store each
users unique information, and can be accessed and used on any
processor module 42 and UCS 22” (Carnahan ¶[0042], Ahern page
15).
7. Carnahan and Ahern disclose that the UCS is also connected with
“portable computing device 36 [such as] a portable digital assistant
(PDA)” (Carnahan ¶[0049], Ahern page 13).
8. Carnahan and Ahern disclose that the UCS contains a “processor
module 42 which may comprise of a high speed microprocessor or
microprocessors” (Carnahan ¶ [0041], Ahern page 14).
9. Carnahan discloses that the PDA “allows the user to send the current
PDA display to be displayed by the UCS device 52” (Carnahan
¶[0061]).
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10. Ahern discloses that the UCS is connected to and receives data from
“a display 34 . . . [and] a portable digital assistant (PDA)” (page 13).
11. Nakamura discloses mounting a flash card on a device “wherein a
side cover has been opened to mount the flash card” (¶[0068]).

PRINCIPLES OF LAW
35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. at 1742 (2007). In KSR, the Supreme Court
emphasized "the need for caution in granting a patent based on the
combination of elements found in the prior art," Id. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. KSR,
127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. The
operative question in this "functional approach" is thus "whether the
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improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 1740.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1739).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Id. at 1162 (citing KSR, 127 S. Ct. at
1741).

ANALYSIS (ISSUE #1)
Knockeart discloses that an “[i]n-vehicle system 105 is configured to
use a removable personal device 160” (col. 4, ll. 32-33). The in-vehicle
system “provides a way of coupling removable personal device 160 to on-
board computer 210” and contains a docking station that “provides a
communication path between the removable personal device and the on-
board computer” (col. 6, ll. 29-31, 35-37). In addition, Knockeart discloses
that the on-board computer has “[s]tatic storage 222 [that] can . . . be a . . .
solid state storage device such as a flash memory” (col. 5, ll. 61-63).
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Because Knockeart discloses that the in-vehicle system includes a docking
station that provides a communication path with a personal device and also
contains solid state storage such as a flash memory, we agree with the
Examiner that Knockeart discloses an “accessory” (i.e., a component that
contains a flash memory card, a microcontroller, and mates with a docking
connector).
Also, Carnahan discloses “universal connectivity stations . . . each
having a plurality of interface ports 24” (¶[0036]) to which a “plurality of
interconnecting and interactive devices are communicably coupled” (¶
[0037]). Ahern also discloses a “plurality of interconnecting and interactive
devices are communicably coupled to each UCS 22” (page 12). The
Universal Connectivity Station (UCS) is connected to a “data module 30 . . .
[that] can store each users unique information, and can be accessed and used
on any processor module 42 and UCS 22” (Carnahan ¶[0042], Ahern page
15). The UCS is also connected with “portable computing device 36 [such
as] a portable digital assistant (PDA)” (Carnahan ¶[0049], Ahern page 13).
Hence, Carnahan and/or Ahern discloses a UCS that is connected to a data
module that stores information (i.e., a “flash memory card”) and a PDA. In
addition, as set forth above based on Knockeart’s disclosure, a PDA couples
or mates with a system via a docking port. We agree with the Examiner that
Knockeart and Carnahan/Ahern discloses or suggests a system connected to
both a flash memory card (i.e., the data module that stores information of
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Carnahan/Ahern or the flash memory of Knockeart), the system being
connected to a PDA via a docking station (Knockeart).
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 1-5 with
respect to issue #1.

ISSUE #2
Appellants assert that “Knockeart et al. does not disclose . . . the PDA
fitted within the accessory” (App. Br. 6) and that “the Examiner incorrectly
attempts to equate the universal connectivity station shown by Carnahan et
al. and Ahern et al. (09/559678) with the accessory of the claimed
invention” (App. Br. 7) because “Carnahan et al. and Ahern et al. teach . . . a
plurality of physically remote devices” (id.).
Did Appellants demonstrate that the Examiner erred in finding that
Knockeart or Carnahan/Ahern discloses or suggests a PDA fitted within an
accessory?

ANALYSIS (ISSUE #2)
As set forth above, Knockeart discloses that an “[i]n-vehicle system
105 is configured to use a removable personal device 160” (col. 4, ll. 32-33),
such as a PDA. The PDA connects to the in-vehicle system (i.e., an
accessory) via a docking station. Therefore, the PDA and the accessory (i.e.,
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the in-vehicle system) are co-located with the PDA being directly connected
to the in-vehicle system or accessory. Hence, even assuming to be true
Appellants’ contention that the claimed invention precludes the PDA and the
accessory from being “physically remote modules” (App. Br. 6), we find
that the PDA and accessory of Knockeart are not disclosed as being
physically remote modules but are disclosed as being physically proximate
modules.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 1-5 with
respect to issue #2.

ISSUE #3
Appellants assert that “Knockeart et al. does not disclose . . . a
microcontroller that determines that data from one of the flash memory
card and the PDA is to be displayed based at least in part upon a control
signal from the PDA” (App. Br. 6).
The Examiner finds that Carnahan discloses “that multiple devices
connected to universal connectivity station 22 can communicate with each
other” (Ans. 13).
Did Appellants demonstrate that the Examiner erred in finding that
Knockeart or Carnahan discloses or suggests a microcontroller that
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determines that data from one of a flash memory card and a PDA is to be
displayed based in part upon a control signal from the PDA?

ANALYSIS (ISSUE #3)
As set forth above, Carnahan/Ahern discloses a UCS that is connected
to “a plurality of interconnecting and interactive devices” (Carnahan
¶[0037), Ahern page 12) including a data module that stores information
(i.e., a “flash memory card”) and a PDA. Carnahan/Ahern also discloses
that the UCS contains a “processor module 42 which may comprise of a high
speed microprocessor or microprocessors” (Carnahan ¶ [0041], Ahern page
14). Also, the PDA “allows the user to send the current PDA display to be
displayed by the UCS device 52” (Carnahan ¶[0061]). Similarly, Ahern
discloses that the UCS is connected to and receives data from “a display 34
. . . [and] a portable digital assistant (PDA)” (page 13). Given that Ahern
discloses exchanging data with both a PDA and a display, we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to display the data from a PDA on the connected display.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 1-10, 22-
30, 33, 34, 36, and 37 with respect to issue #3.

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ISSUE #4
Appellants assert that “Nakamura et al. does not disclose or suggest an
accessory comprising of a hinged opening on top portion of the accessory as
claimed by the Examiner” (Reply. Br. 7).
Did Appellants demonstrate that the Examiner erred in finding that
Nakamura discloses or suggests an accessory comprising a hinged opening
on a top portion of the accessory?

ANALYSIS (ISSUE #4)
As set forth above, Knockeart discloses an accessory connected to a
“solid state storage device such as a flash memory” (col. 5, ll. 61-63).
Nakamura discloses mounting a flash card on a device “wherein a side cover
has been opened to mount the flash card” (¶[0068]). Hence, while
Knockeart discloses mounting a flash card on an accessory, Nakamura
discloses a known method of mounting a flash card on a device as including
opening a side cover and mounting the flash card in an underlying slot (Figs.
26, 27). Therefore, we agree with the Examiner that Knockeart and
Nakamura disclose or suggest an accessory having a hinged opening that
provides access to a recess that receives a flash memory card.
Appellants argue that “the Examiner incorrectly attempts to equate
the portable information terminal (See Figure 26/27, item 10) to the
accessory of the claimed subject matter” (App. Br. 8). However, because
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Knockeart discloses an accessory in which a flash card is mounted, as
described above, we are unpersuaded by Appellants’ arguments.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 6-10, 22-
30, 33, 34, 36, and 37 with respect to issue #4.
Appellants provide no separate arguments for dependent claims 8, 9,
and 37. Consequently, claims 8, 9, and 37 fall together with independent
claims 6 and 25. 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have failed to demonstrate that the Examiner erred in:
1. finding that Knockeart or Carnahan/Ahern discloses an
accessory that receives data from a flash memory card and having a
connector that mates with a docking connector (issue #1),
2. finding that Knockeart or Carnahan/Ahern discloses or suggests
a PDA fitted within an accessory (issue #2),
3. finding that Knockeart or Carnahan discloses or suggests a
microcontroller that determines that data from one of a flash memory card
and a PDA is to be displayed based in part upon a control signal from the
PDA (issue #3), and
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4. finding that Nakamura discloses or suggests an accessory
comprising a hinged opening on a top portion of the accessory (issue #4).

DECISION
We affirm the Examiner’s decision rejecting claims 1-10, 22-30, 33,
34, 36, and 37 under 35 U.S.C. § 103.
No time 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

rwk

Himanshu S. Amin
AMIN & TUROCY, LLP
24th Floor, National City Center
1900 East 9th Street
Cleveland, OH 44114