Ex Parte BosshartDownload PDFBoard of Patent Appeals and InterferencesAug 13, 201010995776 (B.P.A.I. Aug. 13, 2010) Copy Citation 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. Appeal 2009-007002 Application 10/995,776 2 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). Appeal 2009-007002 Application 10/995,776 3 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. Appeal 2009-007002 Application 10/995,776 4 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 Appeal 2009-007002 Application 10/995,776 5 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 Appeal 2009-007002 Application 10/995,776 6 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 Appeal 2009-007002 Application 10/995,776 7 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 Appeal 2009-007002 Application 10/995,776 8 llw TEXAS INSTRUMENTS INCORPORATED P O BOX 655474, M/S 3999 DALLAS TX 75265 Copy with citationCopy as parenthetical citation