Ex Parte Muraki

Patent Trial and Appeal BoardFeb 25, 2014

11941405 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YOSUKE MURAKI ____________ Appeal 2011- 008398 Application 11/941,405 Technology Center 2100 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008398 Application 11/941,405 2 STATEMENT OF THE CASE A Patent Examiner rejected claims 1-20. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION The invention at issue on appeal relates generally to a memory system and more particularly to a removable nonvolatile memory system. (Spec. 1). B. ILLUSTRATIVE CLAIM Claim 1, which further illustrates the invention, follows. 1. A method for operating a removable nonvolatile memory system comprising: inserting a nonvolatile memory into an electronic system; storing timing information onto a passive device coupled with the nonvolatile memory; extracting the nonvolatile memory from the electronic system; and enabling a read function from the nonvolatile memory based on the timing information stored on the passive device. C. REFERENCES The Examiner relies on the following references as evidence: Matsubara US 2002/0081097 Al Jun. 27, 2002 Isomura US 6,374,310 B2 Apr. 16, 2002 Marquot US 4,837,744 Jun. 6, 1989 Appeal 2011-008398 Application 11/941,405 3 D. REJECTIONS Claims 1-4 and 11-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Matsubara, and further in view of Isomura. Claims 5-10 and 15-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Matsubara and further in view of Isomura, and further in view of Marquot. ANALYSIS With respect to independent claims 1 and 11, we select independent claim 1 as the representative claim for the grouping and will address Appellant’s arguments thereto. Appellant’s main contentions are with respect to the combination of the Matsubara and Isomura references. Appellant contends that combining the Matsubara and Isomura references would change the principle of operation of the Matsubara reference. (App. Br. 10-12). The Examiner provides further detail regarding the proposed combination. (Ans. 15-16). We find the Examiner’s proffered combination and motivation to be reasonable. Appellant has not filed a Reply Brief to further respond to the Examiner’s additional reasonings. Appellant further contends that the Matsubara reference teaches away from Appellant’s invention. (App. Br. 12-13). Appellant contends that the Matsubara reference “teaches that recording and playing are independent of the apparatus and both are performed on the same apparatus.” (App. Br. 12). Appellant relies upon in paragraph [0017] of the Specification to support the contention that the same apparatus is used. We find no express limitations in the language of independent claim 1 to support Appellant’s contention Appeal 2011-008398 Application 11/941,405 4 since no read function is expressly performed, but only enabling a read function. Therefore, Appellant’s argument is not commensurate in scope with the express language of independent claim 1 and does not evidence a teaching away. As a result, Appellant’s argument does not show error in the Examiner’s conclusion of obviousness. Appellant further contends that (i) the Isomura reference teaches away from Appellant’s invention (App. Br. 13-14), and (ii) Appellant’s invention can render recorded data unreadable after a specified period of time without requiring the monitoring of every removal of the memory device. (App. Br. 14). Appellant contends that since the Isomura reference tracks every removal and determines whether it is unjust or not, the Isomura reference teaches away since it leads in a direction divergent from Appellant. (App. Br. 14). The Examiner maintains that the relied upon portion of the Specification (¶ [0024]) more closely relates to dependent claim 2 for which the Examiner has relied upon the Matsubara reference in the rejection. We agree with the Examiner, and additionally agree with the Examiner that “there is nothing in the appellant’s disclosure that forbids monitoring of device removal,” and thereby, Isomura does not teach away. (Ans. 17). Since Appellant’s arguments do not show error in the Examiner’s reasoned combination, we sustain the rejection of representative independent claim 1, and independent claim 11 grouped therewith, and dependent claims 2-4 and 12-14 not separately argued. With respect to dependent claims 5-10 and 15-20, Appellant presents separate arguments as to independent claim 6, which we address as follows. Appellant maintains that the Marquot reference discusses inhibition using clock signals, not timing signals stored on Marquot’s capacitors. (App. Br. Appeal 2011-008398 Application 11/941,405 5 16). The Examiner maintains that “the only way the circuit may discharge is to have the clock signal represented within the capacitors. Therefore the capacitors carry timing information as well.” (Ans. 18). We agree with the Examiner. Appellant maintains that the Examiner has not provided the requisite articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. (App. Br. 17). The Examiner provides the same articulated reasoning for the combination as discussed with respect to independent claim 1. We find Appellant’s generalized argument to not show error in the proffered combination. Therefore, we sustain the rejection of representative independent claim 6 and claims 5, 7-10, and 15- 20 not separately argued. CONCLUSION For the aforementioned reasons, Appellant has not shown that the Examiner erred in rejecting claims 1-20 based upon obviousness. DECISION We affirm the obviousness rejections of claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED msc