David DeHaan et al.

Patent Trials and Appeals Board

Jun 4, 2021

2020004954 (P.T.A.B. Jun. 4, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/693,049 03/29/2007 David F. DeHaan TUC920060233US1 (0052) 8625
73908 7590 06/04/2021
GRIFFITHS & SEATON PLLC (IBM)
3813 E. Kenwood St.
MESA, AZ 85215
EXAMINER
KIM, TAE W
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
06/04/2021 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):
docketing@gs-iplaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID F. DEHAAN,
SHELLY L. GERNDT, and PETER W. WENDLER
Appeal 2020-004954
Application 11/693,049
Technology Center 2800
Before CATHERINE Q. TIMM, JEFFREY B. ROBERTSON, and
GEORGE C. BEST, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
Appeal 2020-004954
Application 11/693,049

2
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 8–13 and 21–32. See Appeal Br. 8.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to an optical and copper
transceiver identifier that is affixed to a computing device. Spec. ¶1. Claim
8, reproduced below from Appellant’s Response filed February 14, 2012 pp.
2–3,3 is illustrative of the claimed subject matter:
8. A computer-implemented method of identifying a transceiver
device, comprising:

1 This Decision includes citations to the following documents: Specification
filed March 29, 2007 (“Spec.”); Final Office Action mailed May 10, 2012
(“Final Act.”); Appeal Brief filed October 29, 2012 (“Appeal Br.”);
Examiner’s Answer mailed January 3, 2013 (“Ans.”), and Reply Brief filed
January 22, 2013 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
3 The version of the claims reproduced in the Claims Appendix to the
Appeal Brief appears to be the version of the claims submitted with the
Amendment filed February 3, 2011. However, the claims were further
amended with the Request for Continued Examination filed August 12,
2011. As such, we refer to the latest version of the claims submitted with
the Response filed February 14, 2012, which were not further amended
relative to the claims filed with the Request for Continued Examination.
Appeal 2020-004954
Application 11/693,049

3
detecting an insertion of the transceiver device by an auto
sensing function, the auto sensing function performed upon the
insertion of the transceiver device;
initiating a power-on function upon the insertion of the
transceiver device, wherein the transceiver device triggers the
power-on function;
interrogating the transceiver device to obtain
specification information, wherein a test is performed to
determine if the transceiver device is operational and satisfies
testing criteria;
performing a query to determine whether specification
information from the transceiver device is obtained, the
specification information including at least a vendor number,
part number, supported speed, wavelength information, serial
number, label information, and supported maximum distance of
the transceiver device;
wherein if the specification information is not completely
obtained from the transceiver device,
the vendor and the part number is cross referenced with
stored data maintained in a database, the database field auto-
populated with the specification information obtained from the
stored data; and detecting a removal of the transceiver device
by the auto sensing function, the auto sensing function
performed upon the removal of the transceiver device.
Claims 21 and 27 are also independent and recite a system for
identifying a transceiver device and a computer program product for
identifying a transceiver device, respectively. Id. pp. 3–6.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Meyer US 6,976,794 B1 Dec. 20, 2005
Battaglia US 2006/0171683 A1 Aug. 3, 2006
Jeon US 2007/0250786 A1 Oct. 25, 2007
Appeal 2020-004954
Application 11/693,049

4
REJECTIONS
1. Claims 8–11, 13, 21–24, 26–30, and 32 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Meyer and
Battaglia. Final Act. 2–11.
2. Claims 12, 25, and 31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Meyer, Battaglia, and Jeon. Final Act.
11–12.
OPINION
Rejection 1
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 9–13. We select claim 8 as
representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).
The Examiner’s Rejection
In rejecting claim 8 as unpatentable over Meyer and Battaglia, the
Examiner found Meyer discloses a computer-implemented method of
identifying a transceiver device (an optical module), where a processor
device detects an insertion of the transceiver device, interrogates the inserted
device, and various characteristics of the inserted device are displayed on an
LCD panel. Final Act. 3. The Examiner found Meyer discloses
interrogating the transceiver device to obtain specification information
including at least a part number, supporting speed, serial number, supported
maximum distance of the transceiver device, where the vendor and part
number are cross referenced with stored data maintained in a database. Id.
The Examiner found Meyer does not disclose the specification information
Appeal 2020-004954
Application 11/693,049

5
including vendor number, wavelength information, and label information.
Id. at 4. The Examiner determined, however, that such differences are
nonfunctional descriptive material and are not functionally involved in the
step or structure recited, because the system would be structured the same
regardless of the content of the information. Id. The Examiner determined
further that it would have been obvious to have incorporated the vendor
number, wavelength information, and label information in the specification
information for the purpose of providing all relevant information about the
transceiver device to the user. Id.
The Examiner found Meyer does not disclose detecting the insertion
or removal of a device by an autosensing function, initiating a power-on
function upon the insertion of the device, performing a query to determine
whether specification information from the device is obtained, and
determining whether the specification information is not completely
obtained from the transceiver device. Final Act. 4–5.
The Examiner found Battaglia discloses detecting an insertion of a
device by an auto sensing function that is performed upon insertion of the
device and that initiates a power-on function. Final Act. 5. The Examiner
found Battaglia discloses performing a query to determine whether data
from the device is obtained and determining if the specification information
is not completely obtained from the transfer device. Id. The Examiner
determined “it would have been obvious to incorporate Battaglia’s teachings
into Meyer’s method for the purpose of ensuring proper and user-friendly
execution of the device identification steps by automating the steps of device
detection, powering on, and data transfer verification.” Id. at 6.
Appeal 2020-004954
Application 11/693,049

6
Appellant’s Arguments
Appellant argues that neither Meyers nor Battaglia discloses
interrogating the transceiver device to obtain the specification information
recited in claim 1. Appeal Br. 10. Appellant argues neither reference
discloses performing a query to determine whether the specification
information from the transceiver device is obtained. Id. Appellant contends
neither Meyers nor Battaglia discloses that if the specification information is
not completely obtained from the transceiver device, the vendor and the part
number is cross referenced with stored data maintained in a database and the
database field is auto-populated with the specification information obtained
from the stored data. Id. Appellant contends that the vendor number,
wavelength information, and label information impart functionality that
supports a logical relationship among data elements, and as such, the
Examiner was incorrect to characterize such information as non-functional
descriptive material. Id. 11–13.
Issue
Did Appellant demonstrate reversible error in the Examiner’s
determination that the method of claim 8 would have been obvious over
Meyer and Battaglia?
Discussion
We are not persuaded by Appellant’s arguments. Meyer discloses a
method and apparatus for reading, displaying, and transmitting data obtained
from removable optical modules, where various characteristics of the
inserted module are displayed on an LCD panel. Meyer, col. 2, ll. 20–31.
Meyers discloses the apparatus is used to interrogate the inserted optical
module for information. Id. Meyers discloses the information includes
Appeal 2020-004954
Application 11/693,049

7
vendor name, part number, serial number, transceiver type, signaling rate,
range data, manufacturer date, and lot number information. Id. at col. 5, l.
22 – col. 6, l. 30. As discussed above, the Examiner’s rejection relies not
only on the position that the specification information in claim 8 is non-
functional descriptive material, but also that it would have been obvious to
have obtained all relevant specification information including vendor
number, wavelength information, and label information, which are well
known types of specification information in the art. Final Act. 4; Ans. 3.
Thus, even if we were to agree with Appellant that the particular
specification information recited in claim 8 bears a functional relationship to
the claimed method, Appellant has not provided a persuasive argument to
demonstrate error in the Examiner’s position that it would have been
obvious to have obtained such information.
We are also not persuaded by Appellant’s arguments that the steps of
performing a query to determine whether specification information is
obtained, cross-referencing vendor and part number with stored data
maintained in a database, and auto-populating the specification information
obtained from the stored data in situations where not all of the specification
information is obtained from the transceiver, would not have been obvious
over Meyer and Battaglia.
Battaglia discloses a portable device for transferring data between a
flash memory module and a mass storage device. Battaglia ¶ 2. As the
Examiner found, Battaglia discloses verifying the integrity of data obtained
from the memory module. Id. at ¶ 63. Thus, Battaglia provides evidence
that it is known in the art to check data to ensure that it is whole, complete,
Appeal 2020-004954
Application 11/693,049

8
and correct.4 In addition, as the Examiner found, Meyer discloses a
“matching mode” where the optical module reader disclosed therein
identifies the optical module, searches an inventory data base for an identical
module, and issues a report to the user. Ans. 2–3; Meyer, col. 7, ll. 2–8. In
view of the Examiner’s determination discussed above that it would have
been obvious to have obtained desired specification information for
completeness, we are not persuaded by Appellant’s arguments that Meyer’s
matching mode and Battaglia’s data verification fail to render claim 8
obvious. Reply Br. 3–5.
That is, the ordinary skilled artisan would have understood from
Battaglia that data is commonly queried for completeness and would have
understood from Meyer that when additional data is needed, it is common to
obtain such data from a database. Thus, in the instant case, should the
specification information obtained from the optical module disclosed in
Meyer not be complete, it would have been obvious to one of ordinary skill
in the art to have obtained the missing data from a database, which would
then be displayed to the user, similar to the report produced in Meyer as a
result of the matching mode.
As a result, we affirm the Examiner’s decision to reject claim 8 as
obvious over Meyer and Battaglia.
Rejection 2
Appellant does not separately argue the Examiner’s rejection of
dependent claims 12, 25, and 31 based on the combination of Meyer,
Battaglia, which further relies on Jeon for disclosing a touch screen. Appeal

4 See https://www.yourdictionary.com/data-integrity accessed May 28, 2021.
Appeal 2020-004954
Application 11/693,049

9
Br. 8, 13; Final Act. 11–12. Accordingly, we affirm the Examiner’s
rejection for similar reasons as discussed above with respect to Rejection 1.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–11, 13,
21–24, 26–
30, 32
103(a) Meyer, Battaglia 8–11, 13,
21–24, 26–
30, 32

12, 25, 31 103(a) Meyer, Battaglia,
Jeon
12, 25, 31
Overall
Outcome
8–13, 21–32
RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED