10436055 (B.P.A.I. Mar. 20, 2012)

Ex Parte Gyselings et al

Board of Patent Appeals and InterferencesMar 20, 2012

10436055 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte TIM GYSELINGS, EDWIN AUGUST RINGOOT, ERWIN ALFONS SIX, and BRECHT STUBBE ____________________ Appeal 2009-012559 Application 10/436,055 Technology Center 2400 ____________________ Before ALLEN R. MacDONALD, DEBRA K. STEPHENS, and MICHAEL R. ZECHER, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012559 Application 10/436,055 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary independent claim 9 under appeal reads as follows: Claim 9. An Upstream signal frame structure for use in a time division multiple access system that couples a line terminator via a tree-like network to a plurality of network terminators, said Upstream signal frame being transmitted by a network terminator in an upstream timeslot corresponding to a grant allocated by said line terminator, said Upstream Signal frame structure comprising: overhead data being transmitted in a first time slot of at least one time slot and payload data in each potential adjacent subsequent time slot of said at least one time-slot allocated to said network terminator. Rejections1 The Examiner rejected claims 1-9 under 35 U.S.C. § 102(e) as being anticipated by Shraga (US 6,697,374 B1). 1 Separate patentability is not argued for claims 1-8. Except for our ultimate decision, these claims are not discussed further herein. Appeal 2009-012559 Application 10/436,055 3 Appellants’ Contentions Appellants contend that the Examiner erred in rejecting the claims because: The Examiner cited column 11, lines 7-9 of Shraga as allegedly teaching [the “each of said at least one time-slot corresponding to each of said at least one grant”] aspect of the claims. However, this cited portion of Shraga merely teaches that a grant section 92 controls the upstream transmission from each network terminator by using a control code of the line terminator. Appellant respectfully submits that there is no teaching or suggestion in this cited portion (or any other portion) that "each of said at least one time-slot corresponding to each of said at least one grant", as recited in the claims. Further, Appellant respectfully submits that there is no teaching or suggestion in Shraga of "transmitting upon recognition of said at least one grant being associated to said network terminator by said network terminator, overhead data in a first time slot of said at least one time slot and payload data in each potential adjacent subsequent time slot of said at least one time-slot allocated to said network terminator", as recited in claim 1 and analogously required by independent claims 7-9. (App. Br. 11). Issue on Appeal Did the Examiner err in rejecting claim 9 because Shraga fails to teach the argued limitations? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions (Appeal Brief and Reply Brief) that the Examiner has erred. Appeal 2009-012559 Application 10/436,055 4 As to claim 9, we concur with the anticipation finding reached by the Examiner. The data structure of claim 9 requires “data being transmitted in a first time slot” and “data in each potential adjacent subsequent time slot.” The Examiner cited to Shraga (e.g., figure 3) which we find describes this exact data structure. Appellants attempt to distinguish their claimed data structure by arguing the intended use of the data structure “each of said at least one time-slot corresponding to each of said at least one grant” (App. Br. 11), i.e., “an upstream timeslot corresponding to a grant allocated by said line terminator.” (Claim 9). It is well established that statements of intended use do not serve to distinguish structure over the prior art. See In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477 F.2d 958, 959, 177 USPQ 705,706 (CCPA 1973); In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). Equally, merely reciting the intended use of the data (i.e., overhead or payload) in the data structure does not serve to distinguish structure over the prior art. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1-9 as being anticipated under 35 U.S.C. § 102(e). (2) Claims 1-9 are not patentable. DECISION The Examiner’s rejection of claims 1-9 is affirmed. Appeal 2009-012559 Application 10/436,055 5 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 2 tj 2 We have decided the appeal before us. However, should there be further prosecution of these claims; the Examiner’s attention is directed to recently issued guidance from the Director as follows below in the citations to the Federal Register and Official Gazette. Should there be further prosecution with respect to claims 1-6, the Examiner’s attention is directed to the contradiction between “at least one grant . . . to allocate at least one adjacent subsequent upstream time-slot” (one grant corresponding to many timeslots) and “each of said at least one time-slot corresponding to each of said at least one grant” (e.g., one grant corresponding to one timeslot). See 76 Fed. Reg. 7162 (Feb. 9, 2011); Suppl. Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications. Should there be further prosecution with respect to claim 7 (reciting means-plus-function in the form of “a recognition part”) and claim 8 (reciting means-plus-function in the form of “a grant transmitting module”), the Examiner’s attention is directed to Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (CAFC 2008), and 76 Fed. Reg. 7162, 7167-68 at Part 1.III. C.1-3; Suppl. Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications. Should there be further prosecution with respect to claim 9 (directed to a disembodied data structure), the Examiner’s attention is directed to In re Nuijten, 500 F.3d 1346 (CAFC 2007), and 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); Subject Matter Eligibility of Computer Readable Media.