11072953 (B.P.A.I. Jun. 10, 2011)

Ex Parte Badawi et al

Board of Patent Appeals and InterferencesJun 10, 2011

11072953 (B.P.A.I. Jun. 10, 2011)

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. 11/072,953 03/03/2005 Ashraf H. Badawi P20911 7172 50890 7590 06/10/2011 Caven & Aghevli LLC c/o CPA Global P.O. BOX 52050 MINNEAPOLIS, MN 55402 EXAMINER LO, KENNETH M ART UNIT PAPER NUMBER 2189 MAIL DATE DELIVERY MODE 06/10/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ASHRAF H. BADAWI, HANY M. FAHMY, and ADAM J. NORMAN ____________________ Appeal 2009-0103351 Application 11/072,953 Technology Center 2100 ____________________ Before JEAN R. HOMERE, JAY P. LUCAS, and JOHN A JEFFERY, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Intel Corp. (App. Br. 2.) Appeal 2009-010335 Application 11/072,953 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-34. (App. Br. 3.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented a method and system for interconnecting memory devices on a high-speed transmission line to thereby improve data rates thereon. (Spec. 2, l. 3.) In particular, a controller writes input data into the nearest memory device, and terminates the transmission line with the farthest memory device thereby minimizing transmission loss. (Spec. 5, ll. 1- 12.) Illustrative Claim Independent claim 1 further illustrates the invention. It reads as follows: 1. A method for selecting a topology comprising: splitting a first and a second memory load such that the first load is closer to a source than the second load; writing to the first load, a first memory device, while the second load, a second memory device, temrlnates a transmission line; and selecting a different trace length for the first and second load based at least in part on a frequency component. Appeal 2009-010335 Application 11/072,953 3 Prior Art Relied Upon Wiggers US 6,011,710 Jan. 4, 2000 Langendorf US 6,630,936 B1 Oct. 7, 2003 LeBerge US 7,181,584 B2 Feb. 20, 2007 Rejections on Appeal 1. Claims 1, 5, 6, 10, 14, and 21-25 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Wiggers. 2. Claims 2, 3, 7, 8, 11, 12, 15, 16, 18-20, and 26-34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wiggers and Laberge. 3. Claims 4, 9, 13, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wiggers and Langerdorff. Appellants’ Contentions First, Appellants contend that Wiggers does not disclose writing to a first load/memory device, and terminating the transmission line with the second load/memory device. According to Appellants, Wiggers discloses a bus terminator, which does not correspond to the claimed second load or memory device. (App. Br. 16-17.) Appellants further argue that Wiggers’ disclosure of a resistor is not a second memory device as required by independent claim 1. (Id. at 17.) Appeal 2009-010335 Application 11/072,953 4 Examiner’s Findings In response, the Examiner construes finds that Wiggers describes the disputed limitations by disclosing moving a bus termination, which becomes part of a memory module portion termination, to a point T on the bus to terminate the bus. Consequently, the Examiner finds that Wiggers’ disclosure of placing a bus termination on a memory device to directly form a complete terminated data bus (Ans. 23-26.) Therefore, the pivotal issue before us is as follows: II. ISSUE Have Appellants shown that the Examiner erred in finding that Wiggers describes writing to a first load/memory device, and terminating the transmission line with the second load/memory device, as recited in independent claim 1? III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Wiggers 1. Wiggers discloses a memory system for selectively coupling and decoupling memory devices to a data bus to thereby minimize the capacitive load thereof. (Wiggers, Abstr.) In particular, Wiggers discloses closing only those switches that are necessary to couple with Appeal 2009-010335 Application 11/072,953 5 the desired memory devices to reduce the overall load on the bus. (Col. 6, ll. 5-11.) 2. To further enhance the memory system performance, Wiggers discloses moving a bus termination load from the end of the main board to a point T1located at the end of a module portion closest to a desired memory device. The resulting module terminations, along with the selected switches, will improve performance by allowing the module to complete or terminate the data bus (Wiggers, col. 6, ll. 18- 32.) IV. ANALYSIS 35 U.S.C. § 102 Rejection Claims 1, 5, 6, 10, 14, and 21-25 We find no error in the Examiner’s rejection of independent claim 1, which recites, inter alia, writing to a first load/memory device, and terminating the transmission line with the second load/memory device. In particular, we agree with the Examiner that by moving the bus termination load to the end of a module portion nearest to the memory device selected by the switch to thereby terminate the bus (FF. 2), Wiggers describes that the newly formed module portions (i.e., bus termination + module portion + memory device) includes a second storage device that completes the bus. Further, we find that, by allowing the user to select which storage devices to couple to the bus (FF. 1), Wiggers implicitly describes that a selected Appeal 2009-010335 Application 11/072,953 6 storage device is used to complete the bus while one or more selected storage devices are used for writing input data. Next, we find Appellants’ argument that Wiggers’s disclosure teaches away from invention (Reply Br. 6-7) to be misplaced because the Examiner has rejected the claims under 35 U.S.C. § 102. Our reviewing court has determined that “[t]eaching away is irrelevant to anticipation.” Seachange Int’l, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005). It therefore follows that Appellants have not shown error in the Examiner’s anticipation rejection of claim 1. Regarding claims 5, 6, 10, 14, and 21-25, Appellants reiterate the arguments previously offered for patentability of claim 1. (App. Br. 17-18.) As discussed above, those arguments are not persuasive. Further, Appellants merely allege that Wiggers does not describe the recitations ”parasitic” and the “frequency domain and time domain analysis” as called for in claims 5, 6, and 10. (Id. at 18.) Additionally, Appellants allege that Wiggers’ disclosure does not inherently describe performing the time/frequency domain analysis. (Id.) In response, the Examiner finds that Wiggers’ disclosure of added capacitance and resistance in transmission lines amounts to the parasitic characteristics. (Ans. 27-28.) Similarly, the Examiner finds that Wiggers’ disclosure of minimizing the comb filter effect inherently involves the time/frequency domain analysis. (Ans. 28-29.) We note that, besides those mere allegations, Appellants have not attempted to address the Examiner’s specific findings made in the Answer. Appellants are reminded that a general allegation that the claims define a patentable invention without Appeal 2009-010335 Application 11/072,953 7 specifically pointing out how the language of the claims patentably distinguishes them from the reference does not comply with the requirements of 37 C.F.R. § 1.111(b). Likewise, a statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). We further note that “[i]n relying upon the theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). “[A]fter the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to appellant to ‘prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.’” In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (quoting In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)). See also MPEP §§ 2112 (IV.), (V.). This reasoning is applicable here. We find the Examiner has provided a rationale in the Answer that reasonably supports the finding of inherent anticipation. We see no response in the Reply Brief that specifically addresses the Examiner’s finding that minimizing the comb filter effect inherently involves the time/frequency domain analysis. (see Answer 29, ¶ 2). Therefore, we find Appellants have not met the burden of proving that the subject matter shown to be in the prior art does not possess the characteristic relied on by the Examiner. Appeal 2009-010335 Application 11/072,953 8 Based on the record before us, we find Appellants have failed to rebut the Examiner’s rejection of the cited claims with any persuasive analysis. It is our view that Appellants’ assertions are ineffective in demonstrating error in the Examiner’s prima facie case to establish the patentability of those claims. (App. Br. 17-18). See Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative). For at least the aforementioned reasons, we find Appellants have not sustained the requisite burden on appeal of providing arguments or evidence persuasive of error in the Examiner’s rejection of claims 5, 6, 10, 14, 22, and 24. 35 U.S.C. § 103 Rejections Claims 2-4, 7-9, 11-13, 15-20, and 26-34 Appellants argue that neither LaBerge nor Langendorf cures the noted deficiencies of Wiggers. (App. Br. 19-20.) We have already addressed these arguments in our discussion above, and we found them to be unavailing since we fail to find any such deficiencies in the cited reference. It therefore follows that Appellants have not shown error in the Examiner’s obviousness rejection of the cited claims.2 2 See In re Jung, No. 2010-1019, 2011 WL 1235093, at *7 (Fed. Cir. Mar. 28, 2011) (“Jung argues that the Board gave improper deference to the examiner’s rejection by requiring Jung to ‘identif[y] a reversible error’ by the examiner, which improperly shifted the burden of proving patentability onto Jung. Decision at 11. This is a hollow argument, because, as discussed above, the examiner established a prima facie case of anticipation and the burden was properly shifted to Jung to rebut it. . . . ‘[R]eversible error’ Appeal 2009-010335 Application 11/072,953 9 VI. DECISION We affirm the Examiner’s rejections of claims 1-34 as set forth above. 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)(iv). AFFIRMED Vsh means that the applicant must identify to the Board what the examiner did wrong . . . .”).