Ex Parte Dupuy et al

Board of Patent Appeals and Interferences

Aug 3, 2001

08498749 (B.P.A.I. Aug. 3, 2001)

1

The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.

Paper No.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte
_____________

Appeal No.
Application No.
______________

ON BRIEF
_______________

Before KRASS, and, Administrative Patent Judges.

KRASS, Administrative Patent Judge.

On Request for Re-hearing
Appellants request re-hearing of our decision of March
13, 2001, in which we affirmed the rejection of claims 7-11,
14-17 and 20 under 35 U.S.C.  102 as being anticipated by
the admitted prior art and affirmed the rejection of claims
14, 18 and 21 under 35 U.S.C.  103 as being unpatentable
over the admitted prior art.
Appellants request fails to show any points raised by
them on appeal which were misapprehended or overlooked by
the board in rendering its decision.

2

At page 3 of the request, appellants state that,

If any of claims 7-11, 14-17 and 20 were to be
asserted against the prior art acknowledged in Fig. 2 of
the present application, it is very clear that there
would be no infringement. By the same token, such an
arrangement does not anticipate the claims.

This argument is unpersuasive. The mode of claim interpretation
used by courts in litigation when interpreting claims of issued patents
in connection with infringement or validity determinations is not the
mode of claim interpretation applicable during prosecution of a pending
application. During patent examination claims must be interpreted as
broadly as they reasonably allow. In re Morris, 127 F.3d 1048, 44
USPQ2d 1023 (Fed. Cir. 1997).
Also at page 3 of the request, it is argued,
In addition, it is noted that lines 23-25 of page 8 of the
specification point out that substantially at the start of the
wanted information area is synonymous with substantially at the
start of the control field. This makes it very clear that bit
position no. 12 in a 16-bit control field is not considered to be
substantially at the start of the information area. This is not a
case of reading extra limitations into the claims, but simply a
proper reliance on the specification to determine the meaning of a
claim term.

This position is unpersuasive because claim 17 itself defines the
information area as in the form of at least one data field and at least
one control field. Thus, there is no requirement that the admitted
prior art disclose bit position no. 12 substantially at the start of the
control field itself.
The gist of appellants request with respect to claims 12, 18 and
21 in the paragraph bridging pages 4 and 5 is not that the Board
misapprehended or overlooked any points raised by appellants on appeal

3

but is simply that appellants do not agree with the conclusions and
ultimate decision reached by the board. Manifestly, it constitutes
insufficient basis for us to change our decision.
Lastly, pages 5 and 6 of the request appellants address the
examiners position in the answer that detecting a bad frame earlier
would have been obvious because it would permit better reduction of
congestion. The position is taken and argument is made that the
motivation given by the examiner does not make sense. This argument by
appellants is entitled to no consideration. The argument should have
been made in appellants reply brief such that the examiner would have
had the opportunity to rebut the position in a supplemental answer. We
will not address a new argument which the examiner has had no
opportunity to answer. Ex parte Hindersinn, 177 USPQ 78, 80 (Bd. App.
1971).
For the reasons given above, the request is granted only to the
extent that our decision has been reconsidered but is denied with
respect to making any changes in that decision.

DENIED

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ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
Administrative Patent Judge )

eak/vsh