13750013 (P.T.A.B. Dec. 21, 2017)

Ex Parte de Cesare et al

Patent Trial and Appeal BoardDec 21, 2017

13750013 (P.T.A.B. Dec. 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. 13/750,013 01/25/2013 Josh P. de Cesare 8888-02600 3062 81310 7590 12/26/2017 Mevertnns; HnnH Kivlin Knwe.rt Rr Ci (ArmleJ EXAMINER P.O. BOX 398 Austin, TX 78767-0398 CHOUDHURY, ZAHID ART UNIT PAPER NUMBER 2116 NOTIFICATION DATE DELIVERY MODE 12/26/2017 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): patent_docketing@intprop.com ptomhkkg @ gmail .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSH P. de CESARE, GERARD R. WILLIAMS III, MICHAEL J. SMITH, and WEI-HAN LIEN Appeal 2017-000789 Application 13/750,013 Technology Center 2100 Before ERIC S. FRAHM, LARRY J. HUME, and CARL L. SILVERMAN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-000789 Application 13/750,013 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner’s Non-Final Rejection of claims 1-6 and 8-21. Claim 7 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Examiner has rejected (i) claims 1-3, 6, 8-10, 13-15, and 18-21 under 35 U.S.C. § 102(e) as being anticipated by Gaskins (US 2005/ 0283598 Al;1 published Dec. 22, 2005) (Non-Final Act. 2-7); (ii) claims 4 and 5 under 35 U.S.C. § 103(a) as being unpatentable over Gaskins and Zaabab (US 2006/0095726 Al; published May 4, 2006) (Non-Final Act. 7-8); and (iii) claims 11, 12, 16, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Gaskins alone (Non-Final Act. 8-9). We have reviewed Appellants’ arguments in the Briefs (App. Br. 6-20 and Reply Br. 2-7), the Examiner’s rejection (Final Act. 2-9), and the Examiner’s response (Ans. 2-34) to Appellants’ arguments. Claims 1 and 19 on appeal each requires a reset vector base address register used for changing a vector base address, and claims 6 and 14 on appeal each requires a programming a register with a reset vector address. “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless 1 Gaskins has a publication date of December 22, 2005, which is more than one year before Appellants’ application filing date of January 25, 2013, likely making Gaskins prior art under 35 U.S.C. § 102(b) rather than 35 U.S.C. § 102(e). However, since we reverse based on the merits of Gaskins as an anticipatory reference, we need not address the issue of whether the Examiner has applied the correct statutory basis for rejecting the claims on appeal, an issue that Appellants have not raised in their Appeal. 2 Appeal 2017-000789 Application 13/750,013 inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). Where the Examiner finds a reference inherently discloses a claim element, the Examiner bears the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977); see also Crown Operations Int’l, LTD v. Solatia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). “In 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). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). In this case, the Examiner has not addressed the required proof and relies on possibilities as the presence or use in Gaskins of a reset vector base address register and/or a register programmed with a reset vector base address as recited in the claims on appeal. In short, the Examiner’s findings that (i) “[i]t is clearly inherent that the CPU must have a reset vector base register” (Non-Final 3); and (ii) “it is clear that a memory or register is used to store the modified address” (Non- Final 6) are not supported by the proof required when finding inherent anticipation. 3 Appeal 2017-000789 Application 13/750,013 We agree with Appellants that Gaskins fails to disclose (i) the reset vector base address register recited in claim 1 (App. Br. 6-8); and/or the register for operating on a reset vector base address as recited in remaining independent claims 6 and 14, as well as the reset vector base address register recited in claim 19 (see App. Br. 10-12). As a result, Gaskins fails to anticipate claim 1, as well as the commensurate limitations recited in claims 6 and 8-18.2 In view of the foregoing, we do not sustain the Examiner’s anticipation rejection of independent claims 1,6, 14, and 19, as well as claims 2, 3, 8-10, 13, 15, 18, 20, and 21 depending respectively therefrom. And, (i) for similar reasons; (ii) because claims 4, 5, 11, 12, 16, and 17 each ultimately depend from respective ones of independent claims 1, 6, and 14, thus include similar limitations; and as a result (iii) the Examiner’s obviousness rejections are based on the Examiner’s erroneous anticipation findings with regard to Gaskins discussed supra, we likewise do not sustain the Examiner’s obviousness rejections of the remaining dependent claims over the various combinations relying on Gaskins alone or in combination with Zaabab. 2 We recognize Appellants’ arguments present additional issues. Because we were persuaded of error as to the limitation of a reset vector base address register as recited in claim 1, and commensurately recited in remaining independent claims 6, 14, and 19, we need not reach the additional issues raised by Appellants, as we find the reset vector base address register issue is dispositive of the appeal. 4 Appeal 2017-000789 Application 13/750,013 CONCLUSION Appellants have persuaded us of error in the Examiner’s decision to reject claims 1-6 and 8-21. DECISION We reverse the decision of the Examiner to reject claims 1-6 and 8-21. REVERSED 5