Ex Parte 7376779 et alDownload PDFPatent Trial and Appeal BoardMay 20, 201595001475 (P.T.A.B. May. 20, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,475 10/27/2010 7376779 ACQI-010/17US 310578-2064 3879 58249 7590 05/21/2015 COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue, NW Suite 700 Washington, DC 20004 EXAMINER BANANKHAH, MAJID A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/21/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ HEWLETT-PACKARD COMPANY and INTERNATIONAL BUSINESS MACHINES CORPORATION, Requester, v. ACQIS LLC, Patent Owner. ____________ Appeal 2013-007833 Reexamination Control 95/001,475 Patent 7,376,779 B2 Technology Center 3900 ____________ Before STEPHEN C. SIU, BRUCE R. WINSOR, and STANLEY M. WEINBERG, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In an earlier Decision, mailed October 28, 2013 (“Decision”), we affirmed the Examiner’s decision to reject claims 6-15, 21-25, 31-50, and Appeal 2013-007833 Reexamination Control 95/001,475 Patent 7,376,799 B2 2 61-94 as unpatentable over Gallagher1, OMI2, and Haas3; claims 16-20, 26- 30, and 51-60 as unpatentable over Gallagher, OMI, Haas, and Sheets4; claims 36-40 as unpatentable over Gallagher, OMI, Haas, and Bourgeois5; claims 71-80 as unpatentable over Gallagher, OMI, Haas, and USB6; and claims 81-85 and 92-94 as unpatentable over Gallagher, OMI, Haas, and Pan7. Decision 17. Patent Owner, Acqis LLC, requests rehearing of the Decision under 37 C.F.R. § 41.79.8 Patent Owner argues that “the construction of ‘encoded’ ignores the words of the claims themselves to impermissibly expand the scope of the claimed invention by ignoring the requirement for an encoded serial data stream of a PCI bus transaction.” Req. Reh’g. 3. We disagree with Patent Owner. In construing the term “encoded” in the phrase “encoded serial data stream of PCI bus transaction” we did not ignore the remainder of the 1 U.S. Patent No. 6,742,068, issued May 25, 2004. 2 IEEE Std 1355-1995 – Standard for Heterogeneous InterConnect, October 30, 1998 (“OMI”). 3 Stefan Haas, “The IEEE 1355 Standard: Developments, Performance and Application in High Energy Physics,” thesis for the degree of Doctor of Philosophy, University of Liverpool, December 1998 (“Haas”). 4 U.S. Patent No. 4,670,837, issued June 2, 1987. 5 U.S. Patent No. 5,965,957, issued October 12, 1999. 6 Universal Serial Bus Specification, http://poweredusb.org/pdf/usb11.pdf, 1998 (“USB”). 7 U.S. Patent No. 5,588,850, issued December 31, 1996. 8 Patent Owner’s Request for Rehearing Pursuant to 37 C.F.R. 41.79(a)(1)” (“Req. Reh’g.” or “Request for Rehearing”), dated November 15, 2013. Appeal 2013-007833 Reexamination Control 95/001,475 Patent 7,376,799 B2 3 phrase. We did not, however, incorporate the remainder of the phrase into the term, as to do so would render the words “data stream of PCI bus transaction” in the claim as mere surplusage. Patent Owner argues that the claim recites that the “encoded” data is a “data stream of PCI bus transaction” and that Haas discloses an interface that “carries control signals” but “does not carry any type of PCI bus transaction.” Req. Reh’g. 9. Hence, Patent Owner appears to argue that Haas fails to disclose a “PCI bus transaction.” To the extent that Patent Owner argues that the cited references fail to disclose or suggest a “data stream of PCI bus transaction,” this issue was previously addressed in detail in the Decision. See, e.g., Decision 7-10. Patent Owner does not demonstrate persuasively that we overlooked or misconstrued any points with respect to this issue. Patent Owner also argues that, based on the cited references, “there is no serial data stream.” Req. Reh’g. 7. Hence, Patent Owner now argues that the cited references fail to disclose or suggest “serial data” but does not specify where or when this argument was presented previously. Nor do we identify this argument in Patent Owner’s Appeal Brief. Hence, it appears that Patent Owner presents a new argument for the first time in this Request for Rehearing. A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. §41.79(b)(1). However, “[a]rguments not raised in the briefs before the Board and evidence not Appeal 2013-007833 Reexamination Control 95/001,475 Patent 7,376,799 B2 4 previously relied upon in the briefs are not permitted in the request for rehearing.” Id. Our Decision could not have “misapprehended or overlooked” any point that was not previously raised in the briefs. Hence, Patent Owner’s newly presented argument is untimely and we need not consider Patent Owner’s argument presented for the first time in the Request for Rehearing. In any event, we note that Gallagher discloses that one of ordinary skill in the art would have understood that data may be streamed serially. For example, Gallagher discloses that data is streamed “from a first Ethernet connector . . . serially to . . . a second Ethernet connector . . . thereby providing the local Ethernet bus . . ..” Gallagher 15:39-42. Haas also supports the fact that one of ordinary skill in the art would have understood that data may be streamed serially. For example, Haas discloses that an “interface chip is used to convert from the serial DS-Link signal to a parallel interface.” Haas 43. In other words, Haas discloses data that is streamed serially (and subsequently converted to a parallel interface). We also note that OMI discloses “a family of serial scalable interconnect systems.” OMI 2. One of ordinary skill in the art would have understood that a “family of serial . . . systems” would be capable of streaming data serially given that the systems of OMI are “serial” and given that streaming data serially was known in the art, as further evidenced by both Gallagher and Haas, for example. Appeal 2013-007833 Reexamination Control 95/001,475 Patent 7,376,799 B2 5 Gallagher and OMI both demonstrate that one of ordinary skill in the art would have understood that streaming data serially was known in the art and Haas confirms that streaming data serially was known and that streaming data in parallel was also a known method of streaming data. Hence, one of ordinary skill in the art would have understood that there is a finite number of ways in which data may be streamed, namely serially or in parallel. Given these teachings at least, Patent Owner does not demonstrate persuasively that the combination of the known features in the cited references (e.g., streaming data serially) would have resulted in any more than the predictable result of a “serial data stream.” Patent Owner also reiterates the argument that the cited references fail to disclose or suggest “address bits,” as recited in claim 9, for example. Req. Reh’g. 10. This argument was previously addressed in detail in the Decision. See e.g., Decision 10-11. Patent Owner does not demonstrate persuasively that we misconstrued or overlooked any points with respect to this issue. Based at least on the foregoing, we conclude that Patent Owner’s arguments fail to demonstrate that we overlooked or misconstrued any points. Accordingly, Patent Owner’s Request is denied. REHEARING DENIED Appeal 2013-007833 Reexamination Control 95/001,475 Patent 7,376,799 B2 6 PATENT OWNER: COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue, NW Suite 700 Washington, DC 20004 THIRD PARTY REQUESTER: David L. McCombs HAYNES AND BOONE, LLP IP SECTION 2323 Victory Avenue, Suite 700 Dallas, TX 75219 Copy with citationCopy as parenthetical citation