Ex Parte Eidson et al

Board of Patent Appeals and Interferences

Jun 23, 2004

09096403 (B.P.A.I. Jun. 23, 2004)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN C. EIDSON
and
HANS SITTE
__________
Appeal No. 2003-0340
Application 09/096,403
__________
ON BRIEF
__________
Before JERRY SMITH, DIXON, and GROSS, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-49, which constitute
all the claims in the application.
Appeal No. 2003-0340
Application No. 09/096,403
2
The disclosed invention pertains to a network for
connecting a plurality of devices and to a fan-out device for use
in the network.
Representative claim 33 is reproduced as follows:
33. A fan-out device comprising a top port and a plurality
of downstream ports, said fan-out device comprising:
a plurality of summing circuits, one said summing circuit
being associated with each of said ports; and
a plurality of signal receiving circuits, one of said signal
receiving circuits being associated with each of said ports,
wherein each of said summing circuits generates a signal
comprising the sum of all of the signals received by said signal
receiving circuits that are not associated with that port.
The examiner relies on the following references:
Kim 6,147,682 Nov. 14, 2000
(filed May 07, 1997)
Pasternak et al. (Pasternak) 6,157,614 Dec. 05, 2000
(filed Oct. 22, 1997)
Claims 33, 36 and 37 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by the disclosure of Pasternak.
Claims 1-32, 34, 35 and 38-49 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers Pasternak
in view of Kim.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
Appeal No. 2003-0340
Application No. 09/096,403
3
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon does not support either of the
examiner’s rejections of the claims on appeal. Accordingly, we
reverse.
We consider first the rejection of claims 33, 36 and 37
under 35 U.S.C. § 102(e) as being anticipated by the disclosure
of Pasternak. Anticipation is established only when a single
prior art reference discloses, expressly or under the principles
of inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore & Assocs,
Appeal No. 2003-0340
Application No. 09/096,403
1 Claim 37 was improperly included in this rejection since
it depends from claim 34 which is not subject to this rejection.
4
Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner has indicated how he reads the claimed
invention on the disclosure of Pasternak [answer, pages 4-5].
With respect to independent claim 33, appellants argue that the
devices labeled CA in Figure 3 of Pasternak are the bridge
circuits shown in Figure 4 of Pasternak so that these bridge
circuits cannot possibly be the receiving circuits within the
fan-out device as recited in claim 33. Appellants also argue
that claim 33 requires a summing circuit for each port which
distinguishes from Pasternak because Pasternak only has one
summing circuit in a three port device [brief, pages 3-4].
We will not sustain the examiner’s rejection of
independent claim 33 or of claims 36 and 371 which depend
therefrom for essentially the reasons argued by appellants in the
briefs. The examiner has failed to properly address appellants’
argument that the claimed fan-out device must have a summing
circuit associated with each port of the device. As noted by
appellants, the fan-out device of Pasternak has only one summing
Appeal No. 2003-0340
Application No. 09/096,403
5
circuit in a three port device. Therefore, Pasternak clearly
does not disclose every feature of the claimed invention.
We now consider the rejection of claims 1-32, 34, 35 and
38-49 under 35 U.S.C. § 103. In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the examiner to establish a factual
basis to support the legal conclusion of obviousness. See In re
Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
Appeal No. 2003-0340
Application No. 09/096,403
6
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived by appellants [see 37 CFR § 1.192(a)].
The examiner has indicated how he finds the claimed
invention to be obvious over the teachings of Pasternak and Kim
[answer, pages 5-12]. With respect to independent claims 1 and
18, appellants argue that the examiner has not identified the
second signal combining circuit nor pointed to any teaching in
the cited references that would have led the artisan to modify
the teachings of the references to provide this missing element.
Appellants also argue that the examiner has not identified a
Appeal No. 2003-0340
Application No. 09/096,403
7
plurality of downstream ports as required by the claims.
Appellants also argue that the signal combining circuit
identified by the examiner does not meet the limitations of the
claims with respect to the first signal combining circuit.
Finally, appellants argue that the network cable of Pasternak is
not connected to the top port and each of the downstream ports as
claimed. Appellants assert that Kim does not provide any of
these missing elements from Pasternak [brief, pages 5-6]. The
examiner’s response fails to address the four limitations of the
claims discussed in appellants’ arguments [answer, pages 12-13].
Appellants respond that the signal combining circuit of Pasternak
and the controller of Kim do not satisfy the limitations of
claims 1 and 18 [reply brief].
We will not sustain the examiner’s rejection of
independent claims 1 and 18 or of any of the other claims on
appeal for the reasons argued by appellants in the briefs. We
agree with appellants that the examiner has failed to show
several features of the claimed invention. The examiner,
therefore, has failed to establish a prima facie case of
obviousness. The examiner has also failed to rebut appellants’
reasonable arguments set forth in the briefs. There is no basis
to sustain the examiner’s rejection on this record.
Appeal No. 2003-0340
Application No. 09/096,403
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In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-49 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JS:svt
Appeal No. 2003-0340
Application No. 09/096,403
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Legal Department
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