Ex Parte 5162666 et al

Board of Patent Appeals and Interferences

Oct 26, 2005

90006051 (B.P.A.I. Oct. 26, 2005)

The opinion in support of the decision being

entered today was not written for publication

and is not binding precedent of the Board.

Paper No.

UNITED STATES PATENT AND TRADEMARK OFFICE

r
MAILED
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES O C T 2 6 2005
U.S PATENT AND TRADEMARK W E
BOARD OF PATENTA P W
AND INTERFERENCES
Ex ~arte TRANSLOGIC TECHNOLOGY, INC.

Appeal No. 2005-1050

~eexamination Control Nos. 90/005,384,

90/005,823, 90/005,881, 90/006,051,

and 90/006,392

HEARD: May 31, 2005

Before KRASS, BARRETT, and NAPPI, Administrative Patent Judses.

BARRETT, Administrative Patent Judqe.

DECISION ON REOUEST FOR REHEARING

Appellant filed a Request for Rehearing Under 37 C.F.R.

8 41.52 on September 13, 2005, for rehearing of our original
decision entered July 14, 2005.
The request for rehearing has been considered but is denied

with respect to making any modifications in our decision.

Copied from 90005384 on 03/11/2006
- -
- -
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

ERRATUM

In our original decision, the page numbers in Appendix B

mistakenly start with page 2. There is no page 1 in Appendix B.

ABBREVIATIONS

Pages of the request for rehearing are referred to as
"RR . " Pages of the original decision are referred to as "D . "
Pages of the brief and reply brief to the Board are referred to
as "Br and "RBr , " respectively. Pages of the examiner's
answer are referred to as "EA . "-
DISCUSSION

Patent owner Translogic Technology, Inc. (TTI) argues that

our decision raises new grounds of rejection for three reasons:

(1) it introduces a new claim construction to which patent owner
has no opportunity to respond; (2) it introduces new factual
assertions concerning complex technology; and (3) it proposes a
new ground of rejection using the Toshiba MUX8 reference (RR2).
"TTI requests a full opportunity to address the new claim
construction, the new factual assertions, and the new ground of
rejection in the customary manner - in examination, so that these
reexaminations can be brought to a timely conclusion." (RR5.)
~hus, although not expressly stated, patent owner seeks for us to
denominate our decision as containing a new ground of rejection
under 37 C.F.R. § 41.50(b) (2004) so that prosecution may be
- 2 -

Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

reopened before the examiner under § 41.50 (b) (1) .'
When an examiner rejects a claim as failing to meet one or
more of the statutory requirements for patentability, procedural
due process and 35 U.S.C. § 132 of the patent statute require
that applicants be adequately notified of the reasons for the
rejection of claims so that they can decide how to proceed. See
In re Ludtke, 441 F.2d 660, 662, 169 USPQ 563, 565 (CCPA 1971).
See also In re De Blauwe, 736 F.2d 699, 706, 222 USPQ 191, 197
(Fed. Cir. 1984) (remanding case to Patent and Trademark Office

(PTO) because of failure to notify appellants that there was no
objective evidence to support appellants' arguments). A patent
applicant must have the opportunity to respond to new grounds for
claim rejections put forth by the Board of Patent Appeals and
Interferences (Board) . See In re Waymouth, 486 F.2d 1058, 1061,
179 USPQ 627, 629 (CCPA 1973) ("To attempt to deny appellants an
opportunity to provide a different and appropriate response to
the board's [new] rejection . . . does not satisfy the
administrative due process established by Rule 196(b) of the
Patent Office.") . Rule 196(b) refers to 37 C.F.R. 5 1.196(b),
superseded by 37 C.F.R. § 41.50(b) (2004). A new rejection may
1
Although § 41.50(b) also permits an appellant the option
of arguing the merits of a new ground of rejection in a request
for rehearing, § 41.50(b) (21, since patent owner has not argued
the merits of the alleged new grounds of rejection in the request
for rehearing we presume it would elect further prosecution
before the patent examiner.
Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

occur where the examiner and board reject a claim for different
reasons. Wavmouth, 486 F.2d at 1060-61, 179 USPQ at 629 (new
ground of rejection where "the bases of [the examiner's and
Board's] rejection were wholly different, necessitating different
responses by appellants."). The Board's new findings and reasons
must be material to the rejection to create a new ground of
rejection. See In re Kumar, 418 F.3d 1361, 1368, 76 USPQ2d 1048,
1052 (Fed. Cir. 2005) ("When a rejection for obviousness is based
on overlapping values in the prior art, identification of the
values deemed to overlap is material to the rejection. In this
case the overlapping values were identified for the first time in
the decision of the Board, and are not themselves set forth in
Rostoker or any other reference. In calculating the overlapping
values, the Board found facts not found by the examiner regarding
differences between the prior art and the claimed invention,
which in fairness required an opportunity for response."). A
rejection is not based on new grounds if "appellants have had
fair opportunity to react to the thrust of the rejection."
0
In re Kroniq, 539 F.2d 1300, 1302, 190 USPQ 425, 426 (CCPA 1976) ;
id. at 1303, 190 USPQ at 427 (finding that an applicant had fair
opportunity to challenge a rejection because " [tlhe basic thrust
of the rejection at the examiner and board level was the sameu).
We have considered patent owner's arguments, but are not

persuaded that our decision presented any new grounds of

Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

rejection. Accordingly, we will not denominate our decision as
containing a new ground of rejection under 37 C.F.R. § 41.50(b)
or otherwise modify our original decision.
(1) Claim inter~retation

Patent owner argues that "[tlhe decision introduces a claim
construction that differs from the claim construction adopted by
the Examiner" ( R R 2 ) and " [bl y newly construing the claims, the
Decision effectively offers a new series of rejections, without
providing opportunity to argue, amend or cancel claims, or submit
evidence in view of this new claim constructionu (RR3).
A new ground of rejection, by definition, is a rejection

which is new to the appellant. It is not a new ground of

rejection where an appellant and the examiner expressly argue

different claim interpretations and the Board sides with the

appellant or the examiner because in that case the appellant has

actually argued the claim interpretation. Thus, where the Board

adopts the patent owner's argued claim interpretation, it is not

a new ground of rejection even though the interpretation is

different from the examiner's interpretation. It should also go

without saying that a claim interpretation that is not material

to the rejection does not raise a new ground of rejection.

Patent owner alleges that certain claim interpretations are new

or different from those stated by the examiner without mentioning

Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

that it addressed the claim interpretations in its briefs to the

Board and without attempting to show how the claim interpretation

affects the rejection to create a new rejection.

(i

Patent owner argues that "for the first time, a construction

of 'coupled to receive' is offered. Decision at 11." (RR2).

This is not a new claim interpretation. The claim

interpretation issue in the limitations of a "signal input

terminal couwled to receive [first, second, third, fourth, or

fifth] input variableN and a ".control input terminal couwled to

receive a [first, second, third, or fourth1 control signal" is

whether the terminals must be actually coupled to input variables

or control signals or just capable of receiving these signals,

i.e., whether the input variables and control signals are part of

the claimed combination. The examiner concluded that the "input

signals cannot be relied upon to patentably distinguish the

claims over the combined prior art because the claims are

directed to an apparatus, and the input signals are not part of

this apparatus (i.e., they are merely intended use)" (EA10-11).

Patent owner expressly agreed with this interpretation (repeating

the quoted language and stating "Patentee agrees" (RBrl4)) and,

so, responded to the examiner's interpretation. Therefore, our

claim interpretation is not new, but just memorializes this

Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

agreed upon interpretation that the limitation of a "signal input

terminal coupled to receive [first, second, third, fourth, or

fifth] input variable" refers to the structure of a 'l[tIerminal

capable of receiving an input variable" (D11). "That is, the

'input variable' itself is not part of the claimed combination
and these limitations are anticipated by an input terminal
structure without it having to be actually connected to an input
variable signal." (D11.) Similarly, the limitation of a
"control input terminal coupled to receive a [first, second,
third, or fourth] control signal" refers to a " [t] erminal capable
of receiving a control signal. The control signal itself is not
part of the claimed structure." (D10.) This is not a new claim
interpretation and does not present a new ground of rejection.
(ii)

Patent owner argues ( R R 2 ) :
[Tlhe Decision construes first, second, and third control

signals to be independent and unique. Decision at 10. In

contrast the Examiner's Answer states that the claims do not

recite three different control signals. Examiner's Answer

at 10.

To explain the claim interpretation issue, we begin with the

arguments. In the brief, patent owner argued (Brll):

The claimed 4:l multiplexer circuits have three stases with

four sisnal input terminals and three control input

terminals coupled to receive four different in~ut variables

and three different control sisnals, respectively. The

claimed 5:l multiplexer circuits have four stases with five

siqnal input terminals and four control input terminals

Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

~eexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

coupled to receive five different in~ut variables and four
different control sisnals, respectively.
The examiner correctly stated that "nowhere do the claims recite
'four different input variables', 'three different control
signals', etc." (emphasis added) (EA10) , but "that even if such
terminology were set forth in the appealed claims, the
obviousness rejection based on Gorai would still be proper, as
all of the input variables and control inputs of the Fig. 3
circuit are indeed different from each otheru (EA10).
Our claim interpretation stated that the claimed first,
second, third, fourth, and fifth "input variables" do not require
five different input variables, or that the "input variablesM are
different from the first, second, third, and fourth "control
signals" ( - 2 ) . We further stated that " [il n any case, since
the input variables are not part of the claimed structure, the
nature of the input variables is not a positive claim limitationu
(D12). This claim interpretation is not contested.
The examiner correctly interpreted the claims to not
expressly require the first, second, third, and fourth "control
signals" to be different. We stated (Dl01 : "In a multiplexer
circuit, these control signals are unique and independent of each
other. However, the actual control signals are not part of the
claimed multiplexer structure." Thus, we found that the control
signals in a multiplexer are inherently different from each other
Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

even though not expressly recited in the claims. There are
several reasons why this is not a new ground of rejection.
First, the I1control signalsI1 are not part of the claimed
multiplexer structure (DlO), and the control input terminal only
needs to be "capable of receiving a control signal" (DlO), so the
interpretation that the control signals are independent of each
other does not affect the rejection and does not raise a new
ground of rejection. Second, the claim interpretation is in
patent owner's favor and does not require any argument or
amendment to rebut, so it is difficult to see how patent owner
can reasonably consider it to be a new ground of rejection
requiring reopening of prosecution. Third, the claim
interpretation is consistent with patent owner's express
arguments that the claims require different "input variablesI1 and
"control variables" (see discussion of argument (3), D50-62), so
it is not a new ground of rejection to patent owner. Fourth, the
examiner noted that even if the word "different" was in the
claims, Fig. 3 of Gorai teaches "different" control signals and
input variables and, therefore, the examiner's rejection
addressed the claim interpretation argued by patent owner. This
claim interpretation does not present a new ground of rejection.
Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

Patent owner argues (RR2-3) :
The Decision further states that a variable and its logical
complements are the same variable. Decision at 68. In
contrast, the Examiner's Answer states that a variable and
its logical complement are different variables. Examiner's
Answer at 9 (stating that D and /D are first and second
input variables) .
Our decision agreed with patent owner's statement that a
variable and its logical complement are the same variable. More

precisely, we stated that a variable and its complement represent

different states of the same variable (D68) since a variable and

its complement are not the same thing. Since patent owner

expressly argued the interpretation of uvariable," the claim

interpretation is not a new ground of rejection to patent owner.

Furthermore, the examiner did not interpret a variable and
its logical complement to be the same variable, so our
interpretation is not inconsistent with the examiner's. What the
examiner actually stated was that " [flirst and second input
variables D and /D are applied to the inputs of a first 2:l
multiplexer stageH (EA9), which patent owner argues to be a
statement that a variable and its complement are the same
variable. Patent owner's' argument that the examiner interpreted

a variable and its complement to be the same logical variable is

only true if one reads in an implied limitation that the first,

second, third, and fourth input variables in claim 47 are

Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

different, and then reasons that because the D and /D

(D complement, also written as D) represent the same variable,

they cannot be first and second different input variables. As

noted in Section (1)(ii), suDra, the examiner correctly concluded

that the claims do not require the input variables to be

different from each other (EA10) and we agreed with that claim

interpretation (Dll-12). Since the claims do not require the

input variables to be different, the examiner merely stated that

the first and second input variables were D and /D, not that D

and /D are the same variable as argued by patent owner.

Still another reason why our statement that a variable and

its logical complement represent different states of the same

variable does not raise a new ground of rejection is because the

"input variables" and the "control signalsu are not part of the

claimed combination and do not affect the rejection. Patent

owner agrees that the "input variables" and "control signalsN are

not part of the claimed combination and the limitations of a

"signal input terminal cou~led to receive [first, second, third,

fourth, or fifth] input variableM and a "control input terminal

coupled to receive a [first, second, third, or fourth] control

signal" are met by terminals capable of receiving these input

variables and control signals (D11; D10). The examiner's

rejection expressly found that Gorai and Tosser have terminals

capable of receiving input variables and control signals.

- 11 -
Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

Patent owner argues (RR3) :
The Decision also adopts a new construction of the term

"input variable." According to the Decision, a variable

"must be capable of assuming, at any given time, either one

of at least two values." Decision at 10 (citing Claim

Construction attached to the Order of May 12, 2005 in

Translosic Technolosv, Inc. v. Hitachi, Ltd.). In contrast,

the Examiner's Answer states that all input signals are

"tinput variables' regardless of whether they are set to a

constant value." Examiner's Answer at 15.

Patent owner argued the constant inputs (0, 1) to the three-

stage cascade of Fig. 6 of Gorai "are constants, and thus cannot

correspond to recited input variablesu (Br14). The examiner

responded (EA15-16) :
This argument is also without merit because clearly all

of the nine input signals shown in Gorails Fig. 3 can be

interpreted as "input variables" (indeed it is the reason

that Gorai uses alphanumeric designations for the different

input signals). Moreover, these input signals are all

"input variables" regardless of whether or not they are set

to a constant value, or set to time-varying values (again

note that the claims are being construed using the broadest

reasonable interpretation test). The argument that an

"input variable" cannot be a constant value is not correct

(as just one example, note the well-known equation F=ma,

where the terms can of course be interpreted as "input

variables" even when they are equal to constant values).

Patent owner argued that the examiner errs in stating that input

signals are all "input variablesu regardless of whether or not

they are set to a constant value because a constant (0 or 1) is

not a variable (RBr16-17) .
The examiner properly found that Fig. 3 of Gorai teaches

that all multiplexer inputs can be "variables." This ,is the

- 12 -
Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

rejection to be reviewed. Our decision agreed with patent owner

that a constant (0 or 1) is not a variable and stated that "[a]

variable must be capable of assuming, at any given time, either

one of at least two, values (0 or I), whereas a constant has a

fixed value" (D69), although we noted that the examiner's

statement that a constant could be considered an input variable

is not without support (D10-11). Since patent owner expressly

argued the claim interpretation, our agreement with patent

owner's claim interpretation does not raise a new ground of

rejection to patent owner. In addition, our decision stated that

"since the input signals are not part of the claimed structure,

it does not matter whether the inputs are variables or constant

as long as the multiplexer is capable of handling variablesH

(D70-), so the claim interpretation does not affect the rejection

and does raise a new ground of rejection. The rejection is based

on the finding that the structures in Gorai and Tosser are

capable of receiving variables at their input terminals. This

claim interpretation does not present a new ground of rejection.

Patent owner argues ( R R 3 ) :
Based on this new claim construction, the Decision

notes (in additional comments) that all pending claims may

be unpatentable in view of the conventional multiplexer

circuit shown in the Toshiba TC19G000 Series, MUX8 Macrocell

Data Sheet (the Toshiba MUX8 reference). Decision at 76-78.

The Toshiba MUX8 circuit is described in the background

Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

section of the '666 patent at col. 1, lines 27-34, and the

claimed multiplexer circuits are specifically distinguished

from such a conventional multiplexer at col. 2, lines 3-7.

A claim construction that captures prior art specifically

distinguished in the patent is manifestly unreasonable.

Whether the construction proposed in the Decision mandates

such an unreasonable result should be decided, not merely

flagged as a possibility, as it would either be grounds to

change the construction, or a new ground of rejection which

should be remanded for further action by the examiner and

response by the patentee.

AS discussed in Section (3), infra, the additional comments

of APJ Barrett are not the decision of the Board and, therefore,

do not raise a new ground of rejection. Accordingly, the.

arguments regarding the Toshiba MUX8 are not considered.

(2) Factual assertions

Patent owner argues (RR3-4):

The Decision includes extensive assertions concerning

various aspects of logic design such as those provided at,

for example, Appendices B-C. The Decision attempts to

support these assertions by, for example, stating that they

are "self-evident to any computer scientist or electrical

engineer who has taken an undergraduate computer science

course in switching theory and the design of digital logic

circuits." Decision at B-2. The Decision thus apparently

relies either on the Panel's own technical background or the

taking of Official Notice for such assertions.. Both are

improper. While the U.S. Patent and Trademark Office (PTO)

is accorded expertise in patent examination, the PTO is not

deemed to have expertise in technology. Sandvik Aktiebolaq

v. Samuels, [not reported in F. Supp, 1991 WL 257741,
20 USPQ 1879 at 1880 (D.D.C. 1991) (noting the
Commissioner's need for "true expertsn). Official Notice is
also improper. "Official Notice unsupported by
documentation should be taken only . . . where the facts
asserted to be well-known . . . are capable of instant and
unquestionable demonstration." MPEP., 8th Ed. § 2144.03 at
2100-136. In addition, "technical facts in the areas of
esoteric technology . . . must always be supported by citation
Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

to some reference work." Id. (citing In re Ahlert and

Kruser, 424 F.2d at 1091, 165 USPQ 418 at 420-21 (C.C.P.A.

1970)). Even if introduction of these factual assertions

were proper, Patentee has no opportunity to respond.

The appendices A-C merely provide technical background to

aid the reader's understanding of the Gorai and Tosser references

and do not add any facts or reasons that are necessary to or

relied upon in the rejection. For example, Appendix A explains

what is meant by Gorai1s statement that "an M(p) can realize any

function of ( p + l ) variables1' (page 164) to provide a complete
technical answer to appellant's erroneous argument that the

statement means that a series of 2:l multiplexers with p control

input inputs can realize functions of at most (p+l) variables

(D15-16; D54). However, Appendix A is not necessary to or relied
upon in the rejection itself. - Appendix B provides a definition
of terminology used in Gorai and Tosser and is not necessary to
or relied upon in the rejection. If the reader prefers to rely
on her or his own knowledge or research to determine what is
meant, she or he is free to do so. Appendix C explains how the
examples in Gorai use multiplexers to realize logic functions and
is not necessary to or relied upon in the rejection. We could
have left it to the reader's knowledge or ability to find out or
develop this background information himself or herself, but since
we are aware that most judges do not have technical backgrounds
Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

in computer science and the design of digital logic circuits, we

thought a background explanation would be helpful. The addition

of explanatory background material does not change the rejection

and does not raise a new ground of rejection.

As to patent owner's argument that "[wlhile the U.S. Patent

and Trademark Office (PTO) is accorded expertise in patent

examination, the PTO is not deemed to have expertise in

technology" (RR4), we note that Judge Oberdorfer said the "while

patent examiners are experts in reviewing patent applications in

particular fields, they do not have actual ex~erience in the

te~hnology,'~
Sandvik v. Samuels, 1991 WL 25774, 2.0 USPQ2d at
1880. Thus, Judge Oberdorfer stated that examiner are experts in
their particular fields, but do not have "actual experienceM: he
did not say that examiners do not have "expertise." Also,
"administrative patent judges shall be persons of competent legal
knowledge and scientific ability." 35 U.S.C. § 6(a). Although
the Director retains outside experts (at plaintiff's expense) in
civil actions under 35 U.S.C. § 145, this does not imply that the
Board lacks technical expertise. In any case, the appendices
merely provide technical background and are not relied upon in
the rejections, so they do not raise a new ground of rejection.
As to patent owner's arguments about Official Notice, this

is not a situation where the Board has relied upon Official

Notice for some fact relied upon in the rejection. The

Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

examiner's rejection is not changed in any way by the appendices

and they do not raise a new ground of rejection.

(3) Additional comments in the decision

Appellant argues that the additional remarks to the decision

introduce a new ground of rejection ( R R 4 ) :
According to additional remarks in the Decision, the

conventional multiplexer circuit shown in the Toshiba MUX8

reference that was considered in the original prosecution of

the I666 patent renders all pending claims unpatentable.

The additional remarks note that the Panel did not "want to

raise any new question of a new ground of rejection in the

main opinion." Decision at 76. As best understood by

patentee, according to the Panel, all pending claims may be

unpatentable in view of the Toshiba MUX8 reference with at

least one Panel member concluding that they are

unpatentable. If this is a potential new ground of

rejection it should be fully addressed whether or not the

Panel "wantsu to raise it. If this is not a new ground of

rejection, then, according to the Panel as a whole, all

pending claims are patentable in view of the Toshiba MUX8

reference, and any subsequent request for reexamination

based on the Toshiba MUX8 reference would not raise a

substantial new question of patentability, and would not be

granted. In any case, introduction of this "new" ground of

rejection at this stage of examination effectively denies

TTI the opportunity to respond. The issue should be decided

after full examination, not merely flagged for possible

future action after the patentee prevails on appeal.

The additional comments of APJ Barrett (~76-78) do not

constitute the decision of the Board, just as a dissenting or

concurring opinion by an appeals court judge does not represent

the decision of the court. Therefore, the additional comments of

APJ Barrett do not raise ground of rejection and are not subject

to judicial review. The opinion was modeled after SSIH Eauiw.,

Copied from 90005384 on 03/11/2606
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

S.A. v. United States Int'l Trade Comm'n, 718 F.2d 365,

218 USPQ 678 (Fed. Cir. 1983) (Nies, J., authoring the opinion

and providing additional comments). Two APJs agree with the

opinion up to the page with their signatures: this is the

decision of the Board that is subject to judicial review.

APJ Barrett agrees with the first portion of the opinion (since

he authored it) and expresses additional views. The additional

views of one APJ that a rejection would be appropriate does not

constitute a new ground of rejection because one APJ alone cannot

enter a new ground of rejection. The Board is not required to

raise all potential new grounds of rejection, especially where,

as here, the examiner's rejections are affirmed. The fact that

the additional comments do not constitute a new ground of

rejection does not in any way imply that the claims are

patentable over the Toshiba MUX8 reference.

CONCLUSION

Patent owner's request for rehearing has been considered,
but we are not persuaded that our decision presented any new
grounds of rejection. Accordingly, the request for rehearing is
denied with respect to making any modifications in our decision
or denominating our decision as containing a new ground of
rejection under 37 C.F.R. § 41.50(b).
Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

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 . See 37 C.F.R. § 1.136 (a) (1) (iv) .
DENIED

ERROL A. KRASS )
Administrative Patent Judge )
1
)
1
E. BARRETT ) BOARD OF PATENT& m 3 d
1 APPEALS
~dministrative Patent Judge ) AND
) INTERFERENCES
1
ERT E. NAPPI
Administrative Patent Judge j
Copied from 90005384 on 03/11/2006
Appeal No. 2005-1050

Reexamination Control Nos. 90/005,384, 90/005,823,

90/005,881, 90/006,051, and 90/006,392

KLARQUIST SPARKMAN, LLP Attorney for Patent Owner

121 SW SALMON STREET

SUITE 1600

PORTLAND, OR 97204

ALAN R. LOUDERMILK Third Party Requester
LOUDERMILK & ASSOCIATES
P.O. BOX 3607

LOS ALTOS, CA 94024-0607

Copied from 90005384 on 03/11/2006