Ex Parte Evoy et al

Patent Trial and Appeal Board

Feb 29, 2016

13305100 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/305, 100 11/28/2011
65913 7590 03/02/2016
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
David Ross Evoy
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.
81408818US03
(NXPS.743CIP
CONFIRMATION NO.
9046
EXAMINER
MODO, RONALD T
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ROSS EVOY, JAMES RAYMOND SPEHAR,
and HAROLD GARTH HANSON
Appeal2014-003597
Application 13/305, 100
Technology Center 2100
Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
KAMRAN JIVANI, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003597
Application 13/305, 100
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
Exemplary Claims
Exemplary claims 1 and 5 under appeal read as follows:
1. A bus communication device for providing
communications over a lane, the device comprising:
a set of input pins connected to a bus;
a configurable protocol sense circuit configured to, in
response to receiving an alternate protocol signal on the input
pins, configure the lane for communicating data in accordance
with data received on the set of input pins according to an
alternate protocol indicated by the alternate protocol signal; and
an override sense circuit coupled to the input pins and
configured to, in response to at least one of sensing a main
protocol signal on the input pins and sensing a main protocol
communication on the bus, override configuration via the
configurable protocol sense circuit and configure the lane for
communicating data in accordance with data received on the set
of input pins and according to a main protocol.
5. The device of claim 1,
further including a register that stores data used for
controlling communications on the lane;
wherein the configurable protocol sense circuit is
configured to, in response to receiving an alternate protocol
signal on the input pins, configure the lane by overwriting data
in the register with protocol data received on the input pins
according to the alternate protocol; and
wherein the alternate protocol is multi-level analog
protocol and the main protocol is I2C.
2
Appeal2014-003597
Application 13/305, 100
Rejections
Claim 5 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. Final Act. 3--4.
Claim 5 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite. Final Act. 4.
Claims 1, 3, 7, 9, 11, and 16 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Brewer (US 2003/0229739 Al, Dec. 11, 2003). Final
Act. 5---6.
Claims 2, 4, 8, 12-14, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as obvious over Brewer in view of Das Sharma (US 2008/0178052
Al, July 24, 2008). Final Act. 7-9.
Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as obvious over
Brewer and Das Sharma, further in view of Chang (US 2002/0184429 Al,
Dec. 5, 2002). Final Act. 10-11.
Claim 10 is rejected under 35 U.S.C. § 103(a) as obvious over Brewer
in view of Burnham (US 2004/0133813 Al, July 8, 2004). Final Act. 11-
12.
Claim 15 is rejected under 35 U.S.C. § 103(a) as obvious over
Brewer. Final Act. 12-13.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Final Office Action ("Final Act.") mailed April 19, 2013,
Appeal Brief ("App. Br.") filed August 23, 2013, the Answer ("Ans.")
mailed November 7, 2013, and Reply Brief ("Reply Br.") filed January 7,
2014, for the respective details. We have considered in this decision only
3
Appeal2014-003597
Application 13/305, 100
those arguments Appellants actually raised in the Briefa. Any other
arguments which Appellants could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection of claim 5 under 35 U.S. C. § 112, first and second paragraphs
We have reviewed Appellants' arguments in the Briefs, Examiner's
rejections (Final Act. 3--4), and the Examiner's response to the Appellants'
arguments. We disagree with Appellants' conclusion that the Examiner
erred in finding the Specification fails to demonstrate Appellants had
possession of a multi-level analog protocol, and thus claim 5 is indefinite
when interpreted in light of the Specification as claimed.
The Examiner has provided a comprehensive response to each of
Appellants' arguments on page 7 of the Answer. We have reviewed the
Appellants' arguments and we are not persuaded of error in the Examiner's
rationale to support the rejections. Accordingly, we sustain the Examiner's
rejection of claim 5 under 35 U.S.C. § 112, first and second paragraphs.
Rejection of claims 1, 3, 7, 9, 11, and 16 under 35 U.S.C. § 102(b)
We have reviewed the Examiner's rejections in light of Appellants'
arguments (App. Br. 3-8; Reply Br. 2-5) that the Examiner erred. We
disagree with Appellants' contentions. We adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 5---6) and (2) the reasons set forth by the Examiner in the
Examiner's Answer (Ans. 3---6) in response to Appellants' Appeal Brief. We
concur with the conclusions reached by the Examiner. We highlight and
address specific findings and arguments for emphasis as follows.
4
Appeal2014-003597
Application 13/305, 100
According to Appellants, this appeal turns on claim construction of
"protocol sense circuit" and "override sense circuit" (hereinafter "contested
limitations" 1). App. Br. 4--8; Reply Br. 2--4. Regardless of the general
contentions and imputed intended meanings articulated in the Appeal Brief,
"[i]t is the claims that measure the invention." See SRI Int 'l v. Matsushita
Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en bane)
(citations omitted). Because "applicants may amend claims to narrow their
scope, a broad construction during prosecution creates no unfairness to the
applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (citation omitted). For patent application claims
before the USPTO, "[g]iving claims their broadest reasonable construction
'serves the public interest by reducing the possibility that claims, finally
allowed, will be given broader scope than is justified."' In re Am. A cad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)).
Here, Appellants have not pointed to any claim language that
precludes the Examiner's broader reading. Our reviewing court guides:
"The anticipation analysis asks solely whether the prior art reference
discloses and enables the claimed invention .... " Hewlett-Packard Co. v.
Mustek Systems, Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003).
In reviewing Brewer's description, we find the preponderance of
evidence supports the Examiner's finding of anticipation. See Brewer,
paragraphs 26-27.
1 Independent claims 7 and 16 contain similar contested imitations.
Appellants did not provide separate arguments for dependent claims 3, 9,
and 11.
5
Appeal2014-003597
Application 13/305, 100
For these reasons, on this record, we are not persuaded the Examiner's
claim interpretation is overly broad, unreasonable, or inconsistent with the
Specification.
We also finds Appellants' contention that two embodiments in Brewer
must be combined to meet the elements of claim 7 (Reply Br. 4--5) to be
unpersuasive because the Examiner relies upon a single embodiment as
disclosed in Figure 2 of Brewer. Ans. 6.
Rejection of claims 2, 4-6, 8, 10, 12-15, and 17-20 under 35 USC§ 103
Appellants provides additional arguments with respect to the
patentability of dependent claims 2, 4--6, 8, 10, 12-15, and 17-20 (App. Br.
9-10). The Examiner rebuts each of those arguments in the Answer by a
preponderance of the evidence (Final Act. 7-13; Ans. 7). We agree with the
Examiner's findings and underlying reasoning and adopt them as our own.
We have considered Appellants' Reply Brief but find it unpersuasive
to rebut the Examiner's responses. Consequently, we conclude there is no
reversible error in the Examiner's rejections of claims 1-20.
CONCLUSIONS
The Examiner did not err in rejecting claim 5 under 35 U.S.C. § 112,
first and second paragraphs.
The Examiner did not err in rejecting claims 1, 3, 7, 9, 11, and 16
under 35 U.S.C. § 102(b) as being anticipated by Brewer.
The Examiner did not err in rejecting claims 2, 4, 8, 12-14, and 17-20
under 35 U.S.C. § 103(a) as being unpatentable over Brewer in view of
Das Sharma.
6
Appeal2014-003597
Application 13/305, 100
The Examiner did not err in rejecting claims 5 and 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Brewer and Das Sharma, further in view
of Chang.
The Examiner did not err in rejecting claim 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Brewer in view of Burnham.
The Examiner did not err in rejecting claim 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Brewer.
DECISION
The Examiner's rejections of claims 1-20 are 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)(l)(iv).
AFFIRMED
7