Ex Parte Gay et alDownload PDFPatent Trial and Appeal BoardDec 30, 201613082282 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 13/082,282 04/07/2011 Raphael Gay 82265363 5796 22879 HP Tnr 7590 01/04/2017 EXAMINER 3390 E. Harmony Road Mail Stop 35 DANG, KHANH FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2185 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): ipa.mail@hp.com barbl@hp.com y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAPHAEL GAY, ROBERT J. HORNING, ROBERT BOHL, and BROOKE MELINDA O'DELL LOADER Appeal 2016-000962 Application 13/082,282 Technology Center 2100 Before JEFFREY S. SMITH, SHARON FENICK, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from rejections of claims 1 and 3—20, which constitute all pending claims. Final Act. 1; App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-000962 Application 13/082,282 CLAIMED INVENTION Appellants’ disclosure relates to Peripheral Component Interconnect Express (PCIe) Port bifurcation systems and methods. Spec. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A Peripheral Component Interconnect Express (PCie) card comprising: a PCie interface couplable to a PCie slot within a computing device; a plurality of PCie devices, each device independently coupled to the PCie interface via an unswitched connection; a read only memory (ROM) coupled to the PCie interface, the ROM including bifurcation data; and a clocking signal replicator coupled to the PCie interface to: replicate a reference clock signal received via the PCie interface; and provide the replicated reference clock signal to each of the plurality of PCie devices. Maxim Integrated, “Comparing the I2C Bus to the SMBus,” Application Note 476, December 1, 2000. REFERENCES Chang Campbell Nguyen Sardella US 2007/0067541 A1 Mar. 22, 2007 US 2007/0136620 A1 June 14, 2007 US 7,246,190 B2 July 17, 2007 US 7,934,032 B1 Apr. 26, 2011 2 Appeal 2016-000962 Application 13/082,282 REJECTIONS Claims 1, 3—5, and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sardella, Chang, Nguyen, and Campbell. Ans. 2. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sardella, Chang, Nguyen, Campbell, and Maxim. Ans. 2. Claims 9, 10, and 12—15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Sardella, Chang, Nguyen, and Campbell. Ans. 2. Claim 11 stands rejected under 35 U.S.C. 103(a) as being unpatentable over the combination of Sardella, Chang, Nguyen, Campbell, and Maxim. Ans. 2—3. Claim 16—20 stand rejected under 35 U.S.C. 103(a) as being unpatentable over the combination of Sardella, Chang, Nguyen, Campbell, and Maxim. Ans. 3. ANALYSIS Claims 1, 3—5, and 8 Appellants argue the Examiner errs in rejecting claim 1 over the combination of Sardella, Chang, Nguyen, and Campbell because the following are improper: (i) the Examiner’s rationale for combining Sardella with Chang or Nguyen, (ii) the Examiner’s proposed modification of Sardella, and (iii) the Examiner’s rationale for combining Campbell with the 3 Appeal 2016-000962 Application 13/082,282 other cited references. App. Br. 6—16; Reply Br. 1—5. We are not persuaded by these arguments. Appellants argue that the Examiner’s rationale for combining Sardella with Chang or Nguyen—“for saving space in case the real estate of the system board, on which the PCIe slots are mounted, is limited”—is improper because the Examiner has not shown that the system board of Sardella has limited space. App. Br. 7, 10; Reply Br. 1—2. We are not persuaded by this argument because it is directed to a bodily combination of references, rather than a combination of their teachings. In re Mouttet, 686 F.3d 1322, 1332— 33 (Fed. Cir. 2012). Further, it ignores the creativity of an ordinarily skilled artisan. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Sardella does not have to disclose that its system board has limited space for an ordinarily skilled artisan to recognize that a board built according to Sardella’s teaching would have limited space. Although Sardella may not discuss limits on the space provided by its disclosed board, as Appellants acknowledge in their Specification, the size of electronic devices in general is often decreasing, making space an issue. Spec. 19. Further, Nguyen provides an example where limited space is an issue. Nguyen 2:15—18. Appellants argue the Examiner’s proposed modification of Sardella is improper because Sardella describes allocating lanes to each slot connector, and adding a riser card would result in having two different devices in a single slot. App. Br. 10-13; Reply Br. 2—3. Appellants argue this would render Sardella unsatisfactory for its intended purpose and change its principle of operation. App. Br. 10—13; Reply Br. 2—3. We are not persuaded by this argument because it ignores the knowledge of an ordinarily skilled artisan. Appellants present no reason why an ordinarily 4 Appeal 2016-000962 Application 13/082,282 skilled artisan would have difficulty making the requisite modifications other than the fact that Sardella does not expressly instruct the artisan how to do it. App. Br. 10-13; Reply Br. 2—3. An ordinarily skilled artisan, however, is a person of ordinary creativity, not an automaton. KSR Int 7 Co., 550 U.S. at 421. Appellants argue the Examiner’s rationale for combining Campbell with the other cited art is improper because the Examiner has not shown that the economic cost of adding a clock replicator would not exceed the hardware cost of having multiple clocks. App. Br. 13—16. We are not persuaded by that argument. The Examiner finds that the hardware costs (e.g., the amount of hardware utilized) would be lower with a clock replicator. Ans. 22. And Appellants have not provided persuasive arguments or evidence demonstrating that this is untrue. App. Br. 13—16; Reply 4—5. This reduction in hardware costs suggests the use of the replicator. Ans. 22. Whether an ordinarily skilled artisan would use the replicator in a particular commercial embodiment could be dependent relative economic costs, but that would not negate the suggestion and obviousness of the claim. Accordingly, we sustain the rejection of claim 1 and of claims 3—5 and 8, not separately argued. App. Br. 6—16. Claims 6 and 7 The Final Action states that claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sardella and Maxim. Final Act. 7. In the Appeal Brief, Appellants explain that such a rejection must be in error because claims 6 and 7 ultimately depend on claim 1 and (i) the Examiner found that Sardella does not teach or suggest all 5 Appeal 2016-000962 Application 13/082,282 elements of claim 1 and (ii) Maxim does not teach or suggest the elements of claim 1 missing from Sardella. App. Br. 16. The Examiner explains that the rejection of claim 6 and 7 is also based on Chang and/or Nguyen as would be clear from the dependency of those claims on claim 1 and that Chang and/or Nguyen were merely omitted from the recitation of this rejection in the Final Action because of a cut-and-paste error. Ans. 24. Appellants do not dispute this interpretation by the Examiner. Reply Br. 1—6. Accordingly, we sustain the rejection of claims 6 and 7. Claims 4, 7, and 9—20 Appellants present the same arguments for claims 4 and 9—20 as for claim 1. App. Br. 6—18. Accordingly, we sustain the rejections of claims 4 and 9-20. DECISION We affirm the rejections of claims 1 and 3—20. 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 6 Copy with citationCopy as parenthetical citation