Ex Parte Brunnberg et al

Patent Trial and Appeal Board

Sep 21, 2016

12978859 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/978,859 12/27/2010
25297 7590 09/23/2016
Jenkins, Wilson, Taylor & Hunt, P,A,
3100 Tower Blvd.
Suite 1200, University Tower
Durham, NC 27707
FIRST NAMED INVENTOR
Roiger BRUNNBERG
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1406/696 1993
EXAMINER
WANG, ERICH
ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
09/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptomail@jwth.com
mmcjunkin@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOLGER BRUNNBERG, MARTIN OBERMALER,
and DARLUSZ KRAKOWSKI
Appeal2015-003114
Application 12/978,859
Technology Center 2400
Before CAROLYN D. THOMAS, JOHN F. HORVATH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-10, all the pending claims in the
present application. See Claim Appendix; see also App. Br. 3--4. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2015-003114
Application 12/978,859
The present invention relates generally detecting a defective node
which is connected to a bus. See Abstract.
Claim 1 is illustrative:
1. A method for detecting a defective node which is
connected to a bus, comprising:
incrementing, by a node, an internal error counter
in a normal operating state of the node when an error is
detected,
switching the node to an isolated operating state of
the node, in which the node does not exchange any messages
via the bus if the internal error counter of the node exceeds a
predetermined error threshold value,
switching the node from the isolated operating
state to the normal operating state when a condition is fulfilled,
detecting the switching of the node from the
isolated operating state to the normal operating state as state
change, and
detecting the node as being defective if a rate of
the detected state changes exceeds an adjustable change rate or
a number of detected state changes exceeds an adjustable state
change threshold value.
Appellants appeal the following rejections: 1
RI. Claim 1 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuban (US 2008/0274689 Al; Nov. 6, 2008) and Muto
(US 4,951,281; Aug. 21, 1990) (see Ans. 3); and
R2. Claims 2-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuban, Muto, and Seven (US 2007/0018719 Al; Jan. 25,
2007) (see Ans. 5).
1 The Examiner noted typographical errors and modified the grounds of
rejection set forth in the Office Action dated February 28, 2014 due to the
dependency discrepancies noted by Appellants (see Ans. 3, 20; see also
App. Br. 8). In order to expedite matters, we shall accept this modification.
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Application 12/978,859
ANALYSIS
Procedural Matter
Appellants contend that "[ t ]he amendments and new claims in the
after-final amendment filed on March 29, 2014 should have been entered"
(App. Br. 4). ln particular, the Examiner refused to enter the after-final
amendment (see Ans. 19). \Ve take this opportunity to direct Appellants'
attention to 1\!IPEP § 1201, which states:
The line of demarcation between appealable matters for the
Board of Patent Appeals and Interferences (Board) and
petitionable matters for the Director of the U.S. Patent and
Trademark Office (Director) should be carefully observed. The
Board will not ordinarily hear a question that should be decided
by the Director on petition, and the Di rector will not ordinarily
entertain a petition where the question presented is a matter
appealable to the Board.
1\!lPEP § 1201, gth ed., rev. July 2008.
In the prese11t case~ it appears i\.ppellants 11ave not filed a petition to
resolve the Examiner's refusal to enter proposed amendments prior to the
matter reaching the Board. The Examiner's refusal to enter an amendment is
reviewable by petition under 37 C.F.R. § 1.181 and thus not within the
jurisdiction of the Board. 37 C.F.R. § 1.127 (2009); In re Mindick, 371 F.2d
892, 894 (CCP A 1967) (holding that the refusal of an examiner to enter an
arnendment after final rejection of claims is a matter of discretion, and any
abuse of discretion is remedied by a Rule 181 petition to the Commissioner
of Patents, and not by appeal to the Board of Appeals).
In the present case, it would have been desirable for the Appellants to
have resolved the refusal to enter proposed amendments by petition prior to
the matter reaching the Board.
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Appeal2015-003114
Application 12/978,859
Claim j
Issue 1: Did the Examiner err in finding that Kuban and Muto
collectively teaches or suggests detecting the node as being defective if a
rate of the detected state changes exceeds an adjustable change rate, as set
forth in claim 1?
Appellants contend "counter B of Muto is tracking cumulated errors,
but not the number or rate of state changes" (App. Br. 6). "None of the
counters as taught by Muto are concerned with counting state changes ...
the two desired results requires that the nodes be in opposing states" (id. at
7).
In response, the Examiner finds that "Muto discloses 'detecting the
node as being defective' ... and 'if a number' ... 'exceeds an
adjustable' ... 'threshold value' ... [and] Kuban teaches 'detected state
changes"' (Ans. 15). We agree with the Examiner.
Specifically, the Examiner is relying on the combined teachings of
Muto and Kuban to teach or suggest detecting the node as being defective if
a rate of the detected state changes exceeds an adjustable change rate or a
number, as set forth in claim 1. For example, the Examiner relies on
Kuban' s disclosure of state changes in that Kuban discloses
[t]he error counters are incremented and decremented ... based
on the type of error detected and the error state of the node ...
nodes 112 with high error counts may be put in the passive state
. . . . If their error counts are reduced ... they are allowed to
rejoin the bus 114 in the active state
(see Kuban i-f 45). Appellants' contentions fail to address the Examiner's
aforementioned findings regarding Kuban, importantly because the
Examiner imports Muto merely to highlight detecting the node as being
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Appeal2015-003114
Application 12/978,859
defective if a number exceeds an adjustable threshold value (see ivluto 17: 1-
5), not for counting state changes.
Thus, Appellants' arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is, therefore, ineffective to rebut the Examiner's prima
facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.") (Citations omitted). This reasoning is applicable here.
Accordingly, we sustain the Examiner's rejection of claim 1.
Claims 2-10
Issue 2: Has the Examiner met the burden of establishing that Seven
constitutes analogous art?
Appellants contend that "Seven is non-analogous art" (App. Br. 8)
because "[t]his field of art [in Seven] is not even remotely related to the
problem of the presently disclosed and claimed subject matter" (id. at 9).
The field of endeavor test "requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention." In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004) (citation omitted). Here, the Examiner is silent
about Appellants' field of endeavor and does not cite any evidence in the
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Application 12/978,859
Specification supporting a conclusion that Appellants' field of endeavor is
the same as Seven. See id. at 1326 ("[T]he PTO must show adequate
support for its findings on the scope of the field of endeavor in the
application's written description and claims, including the structure and
function of the invention."). Thus, we agree with Appellants' contentions
that the Examiner fails "to investigate the technical content and teachings of
the instant patent application" (see Reply Br. 3).
Likewise, the Examiner does not make any findings in support of a
determination that Seven is analogous art under the second test. "A
reference is reasonably pertinent if ... it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem." In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
See also In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) ("[I]t is
necessary to consider 'the reality of the circumstances' ... -in other words,
common sense-in deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the
inventor."). Here, the Examiner does not identify the problem with which
Appellants are involved, or explain how Seven is pertinent to that problem.
Because the Examiner has not met the burden of establishing that
Seven constitutes analogous art, we do not sustain the rejection of claims 2-
10 as obvious in view of the cited references.
DECISION
We reverse the Examiner's§ 103(a) rejection of claims 2-10.
We affirm the Examiner's§ 103(a) rejection of claim 1.
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Application 12/978,859
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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