Ex Parte Bosshart

Board of Patent Appeals and Interferences

Aug 13, 2010

10995776 (B.P.A.I. Aug. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK W. BOSSHART
____________

Appeal 2009-007002
Application 10/995,776
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-17, 27, and 28. Claims 18-26 have been
objected to by the Examiner. (See Final Rejection, “Office Action
Summary”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We Affirm.

INVENTION
Appellant’s invention is directed to:
A circular priority selector, which comprises an input
interface (30) for receiving a first N-bit input (REQ) and a second N-bit input (START). The
selector also comprises a binary tree (34) for searching in
the first N-bit input to identify a location of a most
significantly asserted value in the first N-bit input,
wherein the searching commences at a location
responsive to an asserted bit in the second N-bit. The
selector also comprises circuitry (320 through 32N-1),
responsive to the binary tree, for outputting an
output signal indicating a location of the most
significantly asserted value in the first N-bit
input.

(Spec. 47, Abstract).

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ILLUSTRATIVE CLAIM

1. A circular priority selector, comprising:

an input interface for receiving a first N-bit input and a
second N-bit input;

a binary tree for searching in the first N-bit input to
identify a location of a most significantly asserted value in the
first N-bit input, wherein the searching commences at a location
responsive to an asserted bit in the second N-bit; and

circuitry, responsive to the binary tree, for outputting an
output signal indicating a location of the most significantly
asserted value in the first N-bit input.

PRIOR ART
The Examiner relies upon the following references as evidence:

Hirairi U.S. 6,028,987 Feb. 22, 2000
Admitted Prior Art in Background section of Appellant’s
Specification (hereinafter “APA”).

REJECTION
The Examiner rejected claims 1-17, 27, and 28 under 35 U.S.C.
§ 103(a) as unpatentable over APA and Hirairi.

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ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:

Did the Examiner err in rejecting claims 1-17, 27, and 28
under § 103 over APA and Hirairi?

GROUPING OF CLAIMS
Appellant argues all claims on appeal as a group (Br. 17). We select
representative claim 1 to decide the appeal for this group. See 37 C.F.R. §
41.37(c)(1)(vii).
FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer.
(Ans. 3, et seq.).
ANALYSIS
We decide the question of whether the Examiner erred in rejecting
claims 1-17, 27, and 28 under § 103 over APA and Hirairi.
We begin our analysis by observing that Appellant’s arguments are
presented in a single paragraph, reproduced here in their entirety for
convenience:
Claim 1 includes “... a binary tree for searching in
the first N-bit input to identify a location of a most
significantly asserted value in the first N-bit input,
wherein the searching commences at a location
responsive to an asserted bit in the second N-bit ...”. The
references of record do not show, teach, or suggest the
above recited limitations of claim 1. There is no
suggestion or motivation in the art to use the binary tree
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of U.S. Patent No. 6,028,987 in the circular priority
selector of claim 1. Nothing in U.S. Patent No.
6,028,987 and Admitted prior art teach how the binary
tree would perform the searching of claim 1. Nothing in
U.S. Patent No. 6,028,987 and Admitted prior art teach
how the binary tree would function in the circular priority
selector of claim 1. The combined teaching of the
Admitted prior art and U.S. Patent No. 6,028,987 do not
suggest the above limitations of claim 1 to those of
ordinary skill in the art.

(Br. 17).
We also note the Examiner’s detailed response in the Answer
(Ans. 10 et seq.).
The record shows that Appellant has not filed a Reply Brief in
response.
Based upon our review of the record before us, we find Appellant has
failed to present substantive arguments supported with specific factual
evidence of sufficient character and weight to persuade us of error regarding
the Examiner’s findings of fact and ultimate legal conclusion of
obviousness. Merely reciting the language of the claim is insufficient. See
37 C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”). Cf. Appellant’s first sentence in the response on page 17 of the
Brief.
Merely alleging that “[t]he references of record do not show, teach, or
suggest the above recited limitations of claim 1” (Br. 17) is insufficient to
persuade us of Examiner error, as mere attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
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probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte
Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009)
(informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
Appellant further contends “[t]here is no suggestion or motivation in
the art to use the binary tree of U.S. Patent No. 6,028,987 [Hirairi] in the
circular priority selector of claim 1.” (Br. 17).
However, the Examiner does not proffer a motivation to combine the
teachings of Hirairi with the circular priority selector of Appellant’s claim 1.
(See Ans. 3). Thus, we find Appellant’s assertion fails to address the thrust
of the Examiner’s obviousness rejection which sets forth specific factual
findings regarding why an artisan would have been motivated to combine
the teachings of Hirairi with APA so as to render Appellant’s claim 1
obvious. (Id.). Appellant’s argument misses the mark entirely by failing to
address the thrust of the Examiner’s rejection. (Br. 17).
Regarding Appellant’s assertion that “[n]othing in U.S. Patent No.
6,028,987 [Hirairi] and Admitted prior art teach how the binary tree would
perform the searching of claim 1,” we find Appellant fails to provide any
specific citation to APA or Hirairi to provide evidentiary support for this
statement. (Br. 17).
“Argument in the brief does not take the place of evidence in the
record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole,
326 F.2d 769, 773 (CCPA 1964)). This reasoning is applicable here.
Likewise, regarding Appellant’s assertion that “nothing in U.S. Patent
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No. 6,028,987 [Hirairi] and Admitted prior art teach how the binary tree
would function in the circular priority selector of claim 1,” we find
Appellant fails to provide any specific citation to APA or Hirairi to provide
evidentiary support for this conclusory statement. (Br. 17).
We note again that the Examiner has proffered specific evidence
(Ans. 3) to support a finding of how the combination of APA and Hirairi
would have taught or suggested Appellant’s claimed invention, not how
Hirairi’s binary tree would function in the circular priority selector of claim
1.
On this record, we find Appellant has failed to present substantive
arguments and supporting evidence persuasive of Examiner error. Cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the prior art.”).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
For these reasons, we sustain the Examiner’s § 103 rejection of
representative claim 1 over the combination of APA and Hirairi.
Claims 2-17, 27, and 28, not argued separately, fall therewith. See 37
C.F.R. § 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s § 103 rejection of claims 1-17, 27, and 28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED
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