Ex Parte Chen

Patent Trial and Appeal Board

Jun 21, 2017

12352219 (P.T.A.B. Jun. 21, 2017)

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.
12/352,219 01/12/2009 Kevin Chen 72836.P051C3 1399
53720 7590
Chen Yoshimura LLP
Attention Ying Chen
2975 Scott Blvd.
Suite 110
Santa Clara, CA 95054
06/23/2017 EXAMINER
WU, JERRY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
06/23/2017 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):
miwa @ cyiplaw. com
ychen @ cyiplaw. com
pli@cyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN CHEN1
Appeal 2016-008419
Application 12/352,219
Technology Center 2800
Before BRADLEY R. GARRIS, MARKNAGUMO, and
DEBRA L. DENNETT, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1—4, 8—14, 16—19, 21—26, 28—
30, and 32 as unpatentable over Thomas et al. (US 6,671,756 Bl, issued
Dec. 30, 2003) in view of Chang (US 2001/0023141 Al, published Sept. 20,
2001) and of claims 27 and 31 as unpatentable over these references in
1 Aten International Co. Ltd. is identified as the real party in interest. App.
Br. 2.
Appeal 2016-008419
Application 12/352,219
combination with the Examiner’s Official Notice. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
Appellant claims a cable device comprising a switching circuit, a first
cable permanently and fixedly connected to the switching circuit, and a
second cable permanently and fixedly connected to the switching circuit
(independent claims 1, 9, and 17). Appellant also claims a corresponding
method that comprises permanently and fixedly connecting first and second
cables to a switching circuit (remaining independent claim 30).
A copy of representative claims 1 and 30, taken from the Claims
Appendix of the Appeal Brief, appears below.
1. A cable device comprising:
a switching circuit;
a plurality of connector ports electrically coupled to the
switching circuit;
a first cable permanently and fixedly connected to the
switching circuit, the first cable comprising first connector
plugs; and
a second cable permanently and fixedly connected to the
switching circuit, the second cable comprising at least one
second connector plug which is different from each of the first
connector plugs, wherein the switching circuit operably selects
which of the first and second cables is in communication with
the connector ports.
30. A method for operating a cable device, comprising:
operating a switching circuit with switching circuit ports
to switch connections among the switching circuit ports;
electrically coupling connector ports to a first part of the
switching circuit ports of the switching circuit;
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Appeal 2016-008419
Application 12/352,219
permanently and fixedly connecting a first cable, which
includes one or more first connector plugs, to a second part of
the switching circuit ports of the switching circuit;
permanently and fixedly connecting a second cable,
which includes one or more second connector plugs, to a third
part of the switching circuit ports of the switching circuit; and
operating the switching circuit to select which of the first
and second cables is switched to communicate with the
connector ports.
Appellant does not present separate arguments specifically directed to
the dependent claims under rejection (see App. Br. 5—10). Therefore, the
dependent claims will stand or fall with their parent independent claims, of
which claim 1 is representative.
We sustain the above noted rejections for the reasons expressed in the
Final Action, the Answer, and below.
In rejecting the independent claims, the Examiner finds that Thomas
discloses a cable device comprising first and second cables connected to a
switching circuit though not permanently connected as claimed but that
Chang discloses a cable device comprising a cable having a permanent
connection (Final Action 2—3). The Examiner concludes that, in view of
Chang, it would have been obvious to permanently and fixedly connect the
first and second cables to the switching circuit of Thomas’ cable device “so
as to provide the flexibility to connect the device to either external
peripheral devices, another switch, or computer, without losing cables” (id.
at 3).
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Appeal 2016-008419
Application 12/352,219
Appellant argues that, “[w]hile Chang’s cable 2 appears to be
permanently and fixedly connected to the internal circuit of the relay box 1,
there is no switching circuit in the relay box[, and] [t]hus, the cable 2 is not
‘permanently and fixedly connected to the switching circuit’ as claimed”
(App. Br. 7).
Appellant’s argument lacks persuasive merit. As correctly indicated
by the Examiner, the rejection relies on Thomas, not Chang, for disclosing
the claimed switching circuit, and one cannot show nonobviousness by
attacking references individually where, as here, the rejection is based on a
combination of references (Ans. 4). See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA
1981) (cited by the Examiner at Ans. 4).
Appellant further argues that one of ordinary skill in the art would not
have been motivated to permanently and fixedly connect Thomas’ cables to
the switching circuit because such permanently connected cables would be
“inconvenient and impractical” if replacement were necessary, “would limit
the versatility of the overall system,” and “would unnecessarily increase the
cost of the system operation and maintenance” (App. Br. 7—8).
This argument also is not convincing.
The proposed combination of Thomas and Chang establishes a prima
facie case of obviousness because providing the cables and switching circuit
of Thomas with the permanent and fixed connection of Chang yields no
more than the predictable use of prior art elements according to their
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Appeal 2016-008419
Application 12/352,219
established functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (In assessing the obviousness of claims to a combination of prior art
elements, the question to be asked is “whether the improvement is more than
the predictable use of prior art elements according to their established
functions.”).
It is true that the securely-connected benefit of Chang’s permanent
connection would be at the expense of foregoing the easily-replaceable
benefit of Thomas’ non-permanent connection. However, contrary to
Appellant’s apparent belief, nonobviousness is not established simply
because a combination of references would eliminate a benefit of one of the
references. See In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) “[T]he
Board properly found that one of ordinary skill would have been motivated
to pursue the desirable properties taught by Wong, even at the expense of
foregoing the benefits taught by Gross.”).
Appellant also is incorrect in believing that increased cost evinces
nonobviousness. “That a given combination would not be made by
businessmen for economic reasons does not mean that persons skilled in the
art would not make the combination because of some technological
incompatibility.” In re Farrenkopf 713 F.2d 714, 718 (Fed. Cir. 1983).
Regarding independent method claim 30 specifically, Appellant
additionally contends that, “[i]n Thomas, the cables are connected to
external connectors of the KVM switch 2, not to the switching circuit ports
of the switching circuit as claimed” (App. Br. 9).
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Appeal 2016-008419
Application 12/352,219
Appellant’s contention is unpersuasive for a number of reasons. First,
Appellant fails to identify any support for stating that the cables of Thomas
are connected to external connectors rather than switching circuit ports.
Furthermore, this unsupported statement is undermined by Appellant’s
previous characterization of Thomas’ cables as being “plugged into various
ports of KVM switch 2” (App. Br. 7). Finally, Appellant’s unembellished
statement fails to explain why the so-called “external connectors” of Thomas
do not themselves comprise switching circuit ports as required by claim 30.
In summary, Appellant fails to reveal error in the Examiner’s § 103
rejections of the appealed claims.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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