Ex Parte Gries

Board of Patent Appeals and Interferences

Dec 12, 2011

10523210 (B.P.A.I. Dec. 12, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ULRICH GRIES
____________________

Appeal 2009-012186
Application 10/523,210
Technology Center 2400
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Before ERIC S. FRAHM, DENISE M. POTHIER, and
MICHAEL R. ZECHER, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012186
Application 10/523,210

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-8, 10, and 11. Claims 2 and 9 have been canceled. We have
jurisdiction under 35 U.S.C. 6(b). We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added to
disputed portions, reads as follows:
1. A method for performing communication on a bus structured
network between a first device and a plurality of second devices,
comprising:
issuing a first control communication from said first device to a first at
least one of said plurality of second devices by means of an asynchronous
data communication;
issuing real-time data communication from said first device to said
first at least one of said plurality of second devices by means of an
isochronous data communication;
issuing a second control communication from said first device to said
first at least one of said plurality of second devices, said second control
communication being included in said isochronous data communication and
comprising a first control command to said first at least one of said plurality
of second devices for controlling a functionality having an effect directly
recognizable by a user if said first control command is not timely executed
in said first at least one second device.
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The Examiner’s Rejections
1. The Examiner rejected claims 1, 4, 6-8, and 11 under 35 U.S.C.
§ 102(e) as being anticipated by Smyers (US 2002/0026540 A1).
1
Ans. 3-5
and 7-9.
2. The Examiner rejected dependent claims 3 and 10 as being
unpatentable under 35 U.S.C. § 103(a) over Smyers and Fergusson (US
6,404,533 B1). Ans. 5-6 and 9.
3. The Examiner rejected dependent claim 5 as being unpatentable
under 35 U.S.C. § 103(a) over Smyers and Riddle (US 5,434,860). Ans. 6-7
and 9.
Appellant’s Contentions
1. Appellant contends (Br. 4-5) that the Examiner erred in rejecting
claims 1, 4, 6-8, and 11 under 35 U.S.C. § 102(e) for numerous reasons,
including:
(i) although Smyers uses isochronous data communication, Smyers
fails to show the inclusion of a second control communication in the
isochronous data communication, and instead Smyers states that (a) a stream
of data is transmitted on a data isochronous channel, and (b) the control
communication includes a real-time component transmitted on a control
isochronous channel; and
(ii) because data is on one channel, and control communication is on a
different channel, Smyers cannot issue a second control communication

1
Separate patentability is not argued for claims 4, 6, 8, and 11 rejected under
§ 102(e) (Br. 4-5). Appellant only presents arguments on the merits with
regard to independent claims 1 and 7 (see Br. 4-5).

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included in the isochronous data communication which carries the data, as
recited in claims 1 and 7.
2. Appellant contends (Br. 5-6) that the Examiner erred in rejecting
dependent claims 3 and 10 under 35 U.S.C. § 103(a) because Fergusson fails
to cure the deficiencies of Smyers.
3. Appellant contends (Br. 6-7) that the Examiner erred in rejecting
dependent claim 5 under 35 U.S.C. § 103(a) because Riddle fails to cure the
deficiencies of Smyers.
Issues on Appeal
Based on Appellant’s arguments, the issue presented on appeal is:
Did the Examiner err in rejecting claims 1, 3-8, 10, and 11 as being
anticipated or obvious because Smyers fails to teach the real-time
communication and control/isochronous communication limitations at issue
in independent claims 1 and 7?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief that the Examiner has erred. Notably,
Appellant has not filed a Reply Brief in response to the Examiner’s
responsive arguments found at pages 7-9 of the Answer.
We disagree with Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief (see Ans. 3-
9). We concur with the conclusions reached by the Examiner.
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The issue raised in this appeal requires us to interpret claims giving
the claim terms thereof the broadest reasonable interpretation consistent with
the Specification. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259
(Fed. Cir. 2010) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004))); In re Morris, 127 F.3d 1048, 1054-55 (Fed.
Cir. 1997); In re Prater, 415 F.2d 1393, 1404-05, 56 CCPA 1381, 162
USPQ 541, 550-51 (1969) (indicating, before the application is granted,
there is no reason to read into the claim limitations of the specification).
We agree with the Examiner (Ans. 7-9) that two channels are not
required by claims 1 and 7. Claims 1 and 7 do not require that the second
control communication be included in the isochronous communication on
the same channel that carries the data, as the feature of data and control
communications, both occurring in an isochronous data communication,
(found in claims 1 and 7) does not specify whether or not one or two
channels are used (see claims 1 and 7). Appellant’s arguments (Br. 4-5) that
Smyers uses two channels and, thus, fails to teach or suggest the disputed
limitations of claims 1 and 7 are therefore not commensurate in scope with
the recitations found in claims 1 and 7. In view of the foregoing,
Appellant’s arguments (Br. 4-5) that Smyers does not show or suggest the
inclusion of a second control communication in an isochronous data
communication are not convincing.
We agree with the Examiner (Ans.7-9) that Smyers (¶¶ [0014],
[0023], [0034], [0035], and [0037]) discloses issuing (i) real-time data
communication from a first device to at least one second device by means of
an isochronous data communication, and (ii) a second control
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communication from the first device to the at least one second device, where
the second control communication is included in the isochronous data
communication, as set forth in claims 1 and 7.
Smyers discloses real-time data communication over an isochronous
channel (¶¶ [0014] and [0037]). Smyers also discloses control
communications being included in an isochronous data communication (¶
[0034]). Therefore, Smyers communications meet the limitations found in
claims 1 and 7. Appellant has not shown otherwise.
We also agree with the Examiner (Ans. 8-9) that Smyers (¶¶ [0014],
[0023], [0034], and [0035]) discloses real-time data communication using an
IEEE 1394-95 serial bus, and that Appellant’s Specification also discloses
use of the IEEE 1394 bus as a standard bus structure for transmitting and
receiving isochronous data (Spec. 8:15-32). Appellant has not shown
otherwise.
Regarding the obviousness rejections of (1) claims 3 and 10 as being
unpatentable under 35 U.S.C. § 103(a) over Smyers and Fergusson, and (2)
claim 5 over Smyers and Riddle, we find that Appellant has not persuasively
rebutted the Examiner's prima facie case of obviousness for these claims, but
merely contends that the additional references fail to cure the previously-
noted deficiencies of Smyers (see Br. 5-7).
Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellant to present
evidence and/or arguments that persuasively rebut the Examiner's prima
facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Since
Appellant did not particularly point out errors in the Examiner’s reasoning to
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persuasively rebut the Examiner's prima facie case of obviousness with
respect to claims 3, 5, and 10, the rejections are therefore sustained.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 4, 6-8, and 11 as
being anticipated under 35 U.S.C. § 102(e).
(2) The Examiner did not err in rejecting claims 3, 5, and 10 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 3-8, 10, and 11 are not patentable.

DECISION
The Examiner’s rejections of claims 1, 3-8, 10, and 11 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)(1)(iv).

AFFIRMED

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