Ex Parte Toyoshima

Board of Patent Appeals and Interferences

Apr 29, 2010

09972781 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AKIHIKO TOYOSHIMA
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Appeal 2008-002925
Application 09/972,781
Technology Center 2100
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Decided: April 29, 20101
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Before KENNETH W. HAIRSTON, JAY P. LUCAS, and CAROLYN D.
THOMAS, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-002925
Application 09/972,781

2
This is an appeal under 35 U.S.C. §§ 6(b) and 134 from the final
rejection of claims 36 to 39 and 41 to 492.
The disclosed invention relates to a method and device for updating
operational code in a wireless telephone via a wireless module, and for
designating the updated code or an initial operating code as the primary
wireless communication code for the wireless telephone (Figs 1 and 2; Spec.
2, 3, 6; Abstract).
Claims 36 and 44 are the only independent claims on appeal, and they
read as follows:
36. A method for updating code in a wireless telephone, comprising
the acts of:
providing a first operational code to the telephone, the first
operational code being error-checked and being useful by the telephone for
effecting wireless communication;
engaging a wireless module with the telephone, the wireless module
including a removable memory medium holding an updated operational
code; and
transferring the updated operational code from the wireless module to
the telephone.
44. A wireless communication device, comprising:
storage means for storing both an initial operational code and an
updated operational code;
means for designating the initial operational code as a primary code to
be used for wireless communication;

2 Inasmuch as neither the Final Rejection nor the Examiner’s Answer
mentions claim 40, we assume that it is no longer on appeal.
Appeal 2008-002925
Application 09/972,781

3
means for subsequently designating the updated operational code as
the primary code and undesignating the initial operational code as the
primary code; and
means for undesignating the updated operational code as the primary
code and redesignating the initial operational code as the primary code.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sutphin US 5,109,403 Apr. 28, 1992
Reele US 5,893,037 Apr. 6, 1999
Choi US 5,936,887 Aug. 10, 1999
Boals US 6,108,727 Aug. 22, 2000
Schwartz US 6,473,609 B1 Oct. 29, 2002
(filed Sept. 14, 1998)
Samsung’s Digital World-Press Release, Aug. 16, 2001, page 1.
The Examiner rejected claims 44 to 46 under 35 U.S.C. § 102(b)
based upon the teachings of Sutphin.
The Examiner rejected claim 473 under 35 U.S.C. § 103(a) based upon
the teachings of Sutphin and Schwartz.
The Examiner rejected claim 48 under 35 U.S.C. § 103(a) based upon
the teachings of Sutphin and Choi.
The Examiner rejected claim 49 under 35 U.S.C. § 103(a) based upon
Sutphin and Samsung.
The Examiner rejected claims 36, 38, 41, and 43 under 35 U.S.C. §
103(a) based upon the teachings of Sutphin, Boals, and Reele.

3 The rejection of claim 47 is set forth on page 4 of the Final Rejection.
Appeal 2008-002925
Application 09/972,781

4
The Examiner rejected claims 37 and 42 under 35 U.S.C. § 103(a)
based upon the teachings of Sutphin, Boals, Reele, and Choi.
The Examiner rejected claim 39 under 35 U.S.C. § 103(a) based upon
the teachings of Sutphin, Boals, Reele, and Schwartz.
The Examiner contends (Final Rej. 2, 3) that Sutphin describes all of
the device structure set forth in claims 44 to 46. In response, Appellant
argues inter alia (App. Br. 5) that Sutphin “teaches switching features on
and off, not swapping two codes (the original code and the updated code) as
the operational code,” and “nowhere indicates that an updated code, after it
has been used to replace an original code, can itself subsequently be replaced
by the original code, much less that the codes are used as ‘primary
operational code.’”
Sutphin describes a system for programming software feature
switches in a mobile telephone 13 to either a set or reset state (Figs. 1, 3;
Abstract; col. 6, ll. 10-13). A host computer 2 broadcasts feature switch data
to a cell-site facility 10, and the cell-site facility in turn wirelessly transmits
the feature switch data to the mobile telephone 13 to either set or reset the
feature switches.
We agree with Appellant’s argument that the turning on and off of a
software feature switch in Sutphin is not the same as “swapping two codes
(the original code and the updated code) as the operational code” in a
wireless telephone as set forth in claims 44 to 46. Thus, the anticipation
rejection of claims 44 to 46 is reversed because each and every limitation in
the claims is not found either expressly or inherently in Sutphin. In re Crish,
393 F.3d 1253, 1256 (Fed. Cir. 2004).
Appeal 2008-002925
Application 09/972,781

5
The obviousness rejections of claims 36 to 39, 41 to 43, and 47 to 49
are sustained because Appellant has not presented any patentability
arguments directed to these claims.
In summary, the anticipation rejection is reversed, and the
obviousness rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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