Ex Parte Fung

Board of Patent Appeals and Interferences

Dec 13, 2010

11394815 (B.P.A.I. Dec. 13, 2010)

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.
11/394,815 03/31/2006 Laurie P. Fung AVA.0011US 2583
21906 7590 02/25/2011
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
GILMAN, ALEXANDER
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
02/25/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LAURIE P. FUNG
____________________

Appeal 2009-013303
Application 11/394,815
Technology Center 2800
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
ROBERT E. NAPPI, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/394,815

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STATEMENT OF THE CASE
Introduction
This is a decision on Appellant’s Request for Rehearing.
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows
(emphasis added):
1. An apparatus comprising:

a first group of electronic modules having a first orientation, the first
group of electronic modules having respective devices;

a midplane board;

a second group of electronic modules having respective devices and a
second orientation different from the first orientation, the second group of
electronic modules connected to the first group of electronic modules
through the midplane board; and

bridge boards electrically connected to the first and second groups of
electronic modules to electrically connect devices of at least some of the first
and second groups of electronic modules, wherein the bridge boards are
different from the electronic modules in each of the first and second groups.

In our Decision, we agreed with the Examiner that Uzuka teaches or
suggests the recited bridge boards (i.e., wiring boards having connections
and no electronic devices), as set forth in independent claims 1, 12, and 19.
(Dec. 4).
Appellant’s Contentions
1. At page 2 of the Request, Appellant contends that the Board
“apparently conceded” that “Uzuka does not disclose the bridge boards
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recited in claim 1,” where the bridge boards are “different from the
electronic modules.”
2. Appellant further contends that “[t]here is absolutely no
teaching or hint in Uzuka of the bridge boards recited in claim 1” (Req. 2).
3. At pages 2-3 of the Request, Appellant contends that the Board
erred because the facts of In re Karlson and In re Kuhle are distinguishable
from the facts of the present case, and therefore these cases are inapplicable.
Appellant asserts that the issue in the present case is whether Uzuka
discloses or hints at the positively recited bridge boards set forth in claim 1,
and not whether it would have been obvious to substitute or replace any of
the printed wiring boards with bridge boards.
4. At page 3 of the Request, Appellant contends that there is no
hint in Uzuka of cost savings achieved by replacing wiring boards with
bridge boards.

ANALYSIS
First Contention
We disagree with Appellant’s first contention. The Board did not
concede, in the original Decision, that Uzuka does not disclose the bridge
boards recited in claim 1. To the contrary, our original Decision states,
“[s]pecifically, we agree that Uzuka teaches or suggests the recited bridge
boards, midplane board with connectors, and broken links set forth in
independent claims 1, 12, and 19” (De. 4).

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Second Contention
We disagree with Appellant’s second contention, that there is no
teaching or hint in Uzuka of the bridge boards recited in claim 1. As
discussed with respect to Appellant’s first contention supra, our original
Decision states that “we agree that Uzuka teaches or suggests the recited
bridge boards, midplane board with connectors, and broken links set forth in
independent claims 1, 12, and 19” (De. 4). The conclusion of the Board in
the original Decision, that Uzuka teaches or suggests bridge boards that are
different than the wiring boards of the electronic modules as set forth in
claim 1, is based on the broadest reasonable interpretation of claim 1,
consistent with the specification.
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) (en banc); In re Morris, 127 F.3d 1048, 1053-54
(Fed. Cir. 1997).
As noted by the Examiner, “claim 1 does not present any criterion for
[the] term ‘different’” (Ans. 6). The Specification provides the following
description with respect to bridge boards:

To re-connect the broken links in a partially-loaded
system, bridge boards (also referred to as "bridge cards") are
used. A "bridge board" or "bridge card" refers to a circuit
board or card that is different from the circuit boards 108 and
110. The circuit boards 108 and 110 in respective first and
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second groups 104 and 106 are considered functional circuit
boards that have electronic devices to perform their intended
functions (e.g., switching function, line interface function,
processing function, storage function, etc.). On the other hand,
a bridge board or bridge card does not include the functional
electronic devices for performing the functions of the functional
circuit boards 108, 110. In some embodiments, each bridge
board includes signal traces (without the functional electronic
devices), which signal traces are used for the purpose of re-
connecting the floating connectors 116A, 118A to
corresponding circuitry to remove the broken links and to
enable proper functioning of the electronic devices coupled to
the broken links.

More generally, reference is made to a "bridge module,"
which includes bridge boards, bridge cards, other types of
electronic modules for performing bridging, and so forth. In
general, a "bridge module" refers to any module that performs
electrical bridging between electronic modules provided on two
opposite sides of a midplane board.

(Spec. ¶¶ [0028] and [0029] (emphases added)). Thus, one of ordinary skill
in the art would interpret the recitation in claim 1 of bridge boards that are
different from electronic modules to encompass subsets of the electronic
modules that are “different” from others of the electronic modules (i.e., first
and second groups of electronic modules), even in the slightest fashion (e.g.,
differences such as processing speed, dimensions, types of devices thereon,
etc.).
Furthermore, in interpreting the meaning of claim terms,
“[d]ifferences among claims can also be a useful guide in understanding the
meaning of particular claim terms.” Phillips, 415 F.3d at 1314 (citations
omitted). "[T]he presence of a dependent claim that adds a particular
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limitation gives rise to a presumption that the limitation in question is not
present in the independent claim." Id. at 1315 (citations omitted).
A proper analysis of the meaning of the language of claim 1 includes
consideration of the doctrine of claim differentiation as recently applied by
our reviewing court. See Saunders Group, Inc. v. Comfortrac, Inc., 492 F.3d
1326, 1331 (Fed. Cir. 2007) (stating that where a dependent claim adds a
limitation to an independent claim, the doctrine of claim differentiation
supports the inference that the independent claim encompasses subject
matter which does not include the added limitation). Under the doctrine of
claim differentiation, we look to differences between claims to determine the
meaning of claim language. See Phillips, 415 F.3d at 1315 (“[T]he presence
of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
claim.”).
Dependent claim 11 recites, in pertinent part, “wherein the bridge
boards have connectors and signal traces to connect corresponding
connectors of the first group electronic modules and second group electronic
modules, the bridge boards configured without the devices of the electronic
modules in the first group and the second group” (claim 11 (emphasis
added)).
Thus, dependent claim 11, which depends from independent claim 1,
recites and expands upon the bridge board limitation of claim 1 (i.e.,
dependent claim 11 adds the limitation “configured without the devices”).
Claim 1 broadly calls for bridge boards that are “different from the
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electronic modules” that have devices (see claim 1 on appeal), but makes no
mention of the term in claim 11 of a “configured without the devices.”
Thus, the doctrine of claim differentiation supports the inference that the
details of dependent claim 11 which further define the bridge boards of
claim 1 as being configured without devices are not necessarily
encompassed by independent claim 1 which does not recite these details.
See Saunders Group, Inc., 492 F.3d at 1331. In other words, claim 1 is
broader than claim 11, and therefore could or could not include the details of
claim 11. Accordingly, claim 11 and the doctrine of claim differentiation
actually support the Examiner’s interpretation of claim 1 as broadly
encompassing bridge boards that are “different from” the “electronic
modules in each of the first and second groups,” including that the
differences might not be that the boards are configured without devices (i.e.,
that the boards be configured with devices, yet still are different in another
way from the electronic modules). Our affirmance of the Examiner’s
rejection of claim 1 reflects our agreement with the Examiner’s recognition
that claim 1 does not specify the character or type of difference between the
bridge boards and the electronic modules, and that such difference could be
in the electronic devices disposed on the boards, or differences in dimension
(see Ans. 4).
Third and Fourth Contentions
We disagree with Appellant’s third and fourth contentions, because
our original Decision was not premised on whether it would have been
obvious to substitute or replace any of the printed wiring boards with bridge
boards. Rather, our original Decision was premised on a subset of Uzuka’s
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boards being “different” than others of the set of boards (52 and 53 in
Uzuka), and thus reading on the “bridge board” limitation recited in claim 1.
One way that Uzuka’s bridge boards could be different is if the devices were
removed to save cost and reduce complexity, as known to those of skill in
the art. No suggestion is needed in Uzuka to remove the devices; rather it
would be an obvious expedient and would be with the level of skill of the
ordinarily skilled artisan (see Dec. 4).
Even assuming, arguendo, that it would not have been obvious to
remove the devices from a subset of the boards to arrive at the bridge boards
recited in claim 1, slight differences in dimension or device type of the
boards 52 and 53 of Uzuka would meet the “bridge boards” limitation so
broadly set forth in claim 1.
Summary
We have carefully considered the arguments as to claim 1 raised by
Appellant in the Request for Rehearing, but none of these arguments is
persuasive that the original decision was in error. We find that Appellant
has not shown the Board erred in finding that Uzuka teaches or suggests
“bridge boards” that “are different from the electronic modules” in
sustaining the rejection of claim 1 under 35 U.S.C. § 103(a).
Although the concluding paragraph on page 3 of the Request for
Rehearing implies that Appellant requests rehearing of all of the claims (i.e.,
claims 1-20), we note that Appellant does not provide any separate
arguments on the merits as to claims 2-11 which depend from claim 1, or as
to independent claims 12 and 19 and respective corresponding dependent
claims 13-18 and 20. Based on (i) the content of Appellant’s Request for
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Rehearing, which only discusses claim 1 on the merits, and (ii) the fact that
the term in question (“bridge boards are different from the electronic
modules”) does not appear in claims 12 and 19, we only reconsider our
decision with respect to claim 1.

DECISION
In view of the foregoing discussion, we grant Appellant’s Request for
Rehearing to the extent of reconsidering our decision, but we deny
Appellant’s request with respect to making any change thereto.

REQUEST FOR REHEARING DENIED

kis

TROP PRUNER & HU, PC
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631