Ex Parte Honda

Board of Patent Appeals and Interferences

Aug 27, 2010

11062954 (B.P.A.I. Aug. 27, 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.
11/062,954 02/22/2005 Hiroyasu Honda 9319R-001022 9772
27572 7590 08/27/2010
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
KNOLL, CLIFFORD H
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
08/27/2010 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 HIROYASU HONDA
____________

Appeal 2009-007985
Application 11/062,954
Technology Center 2100
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

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.
Appeal 2009-007985
Application 11/062,954

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, which are all of the pending claims in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Invention
Appellant’s invention relates to a data transfer control device that
includes a link controller which analyzes a packet received from a host-side
data transfer control device through a serial bus, and an interface circuit
which generates interface signals and outputs the generated interface signals
to an interface bus. A packet transferred from the host-side data transfer
control device through the serial bus includes a synchronization signal code
field for setting a synchronization signal code. Abstract.

Representative Claims
1. A data transfer control device which controls data
transfer, the data transfer control device comprising:

a link controller which analyzes a packet received from a
host-side data transfer control device through a serial bus; and

an interface circuit which generates interface signals and
outputs the generated interface signals to an interface bus,

wherein a packet transferred from the host-side data
transfer control device through the serial bus includes a
synchronization signal code field for setting a synchronization
signal code, the synchronization signal code includes a plurality
of data bits, a first one of the plurality of data bits is set to
indicate that a horizontal synchronization signal is active, and a
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Application 11/062,954

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second one of the plurality of data bits is set to indicate that a
vertical synchronization signal is active, and

wherein the interface circuit generates the horizontal
synchronization signal based on whether the first one of the
plurality of data bits is set and the vertical synchronization
signal based on whether the second one of the plurality of data
bits is set.

5. A data transfer control device which controls data
transfer, the data transfer control device comprising:

an interface circuit which performs interface processing
between the data transfer control device and a system device;
and

a link controller which generates a packet transmitted to a
target-side data transfer control device through a serial bus,

wherein the interface circuit receives a synchronization
signal from the system device, and

wherein the link controller sets a synchronization signal
code corresponding to the synchronization signal received from
the system device in a synchronization signal code field of a
packet, the synchronization signal code includes a plurality of
data bits, a first one of the plurality of data bits is set to indicate
that a horizontal synchronization signal is active, a second one
of the plurality of data bits is set to indicate that a vertical
synchronization signal is active, and the link controller
transmits the packet in which the synchronization signal code is
set to the target-side data transfer control device.

Examiner’s Rejections
Claims 1-6 and 11-16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Seo (US 2004/0051655) and Mair (US 6,903,780).
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Application 11/062,954

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Claims 7-10 and 17-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Seo, Mair, and Santou (US 6,879,321).

Claim Groupings
In view of Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1 and 5. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
(1) Has Appellant shown that the Examiner erred in finding that the
combination of Seo and Mair teaches “the synchronization signal code
includes a plurality of data bits, a first one of the plurality of data bits is set
to indicate that a horizontal synchronization signal is active, and a second
one of the plurality of data bits is set to indicate that a vertical
synchronization signal is active” as recited in claim 1?
(2) Does the recitation “the synchronization signal code includes a
plurality of data bits, a first one of the plurality of data bits is set to indicate
that a horizontal synchronization signal is active, [and] a second one of the
plurality of data bits is set to indicate that a vertical synchronization signal is
active” in claim 5 represent non-functional descriptive material that is not
entitled to patentable weight?

FINDINGS OF FACT
1. Seo teaches a video signal control unit that stores a video signal
according to horizontal and vertical synchronization signals. ¶ [0051].
2. Mair teaches encoding two binary signals representing
horizontal and vertical synchronizing signals. Col. 4, ll. 7-10.
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Application 11/062,954

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PRINCIPLES OF LAW
Claim Interpretation
Our reviewing court has held that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). The content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information
content of a memory. . . . Nor does he seek to patent the content of
information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d
1883, 1887-90 (BPAI 2008) (precedential).

ANALYSIS
Claims 1-4 and 11-14
Appellant contends that the combination of Seo and Mair does not
teach or suggest that “the synchronization signal code includes a plurality of
data bits, a first one of the plurality of data bits is set to indicate that a
horizontal synchronization signal is active, and a second one of the plurality
of data bits is set to indicate that a vertical synchronization signal is active”
as recited in claim 1. App. Br. 6-8. The Examiner finds that Mair discloses
data bits set to indicate active synchronization signals. Ans. 3.
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Mair teaches encoding two binary signals representing horizontal and
vertical synchronizing signals. However, the rejection fails to show how
either of Seo or Mair, or their combination, teaches “a first one of the
plurality of data bits is set to indicate that a horizontal synchronization signal
is active, and a second one of the plurality of data bits is set to indicate that a
vertical synchronization signal is active” as recited in claim 1. Therefore,
even if Seo and Mair were combined, the combination would not meet the
requirements of the synchronization code signal as recited in claim 1.
We do not sustain the rejection of claim 1 under 35 U.S.C. § 103, nor
that of claims 2-4 and 11-14 which incorporate the limitations of claim 1.

Claims 5-10 and 15-20
Appellant contends that the combination of Seo and Mair does not
teach or suggest “a first one of the plurality of data bits is set to indicate that
a horizontal synchronization signal is active, [and] a second one of the
plurality of data bits is set to indicate that a vertical synchronization signal is
active” as recited in claim 5. App. Br. 9-11. Appellant further contends that
the Examiner has failed to give this limitation patentable weight. App. Br.
11; Reply Br. 5.
The pertinent question is whether an otherwise anticipated or obvious
device becomes non-obvious because it includes data bits set to indicate
active synchronization signals. Where non-functional descriptive material is
not functionally related to the substrate, the non-functional descriptive
material will not distinguish the invention from the prior art in terms of
patentability. Thus, the relevant inquiry here is whether the data bits of
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claim 5 have a new and unobvious functional relationship with the substrate
(e.g., the data transfer control device).
The plurality of data bits recited in claim 5, unlike the data bits of
claim 1, are not actually used in generating synchronization signals. Nor are
the data bits involved in any claimed function, other than being transmitted
to a target-side data transfer control device. The data transfer control device
of claim 5 is the same regardless of whether the data bits are “set to indicate”
something. The “plurality of data bits set to indicate” horizontal and vertical
synchronization signals is therefore non-functional descriptive material that
is not entitled to weight in the patentability analysis.
We agree with the Examiner that the argued claim 5 recitation
directed to what the bits are “set to indicate” is not entitled to patentable
weight. Appellant has thus not demonstrated error in the rejection. We
sustain the rejection of claim 5 under 35 U.S.C. § 103. Appellant has not
presented arguments for separate patentability of claims 6-10 and 15-20
(App. Br. 11). Claims 6-10 and 15-20 thus fall with claim 5.

CONCLUSIONS OF LAW
(1) Appellant has shown that the Examiner erred in finding that the
combination of Seo and Mair teaches “the synchronization signal code
includes a plurality of data bits, a first one of the plurality of data bits is set
to indicate that a horizontal synchronization signal is active, and a second
one of the plurality of data bits is set to indicate that a vertical
synchronization signal is active” as recited in claim 1.
(2) The recitation “the synchronization signal code includes a
plurality of data bits, a first one of the plurality of data bits is set to indicate
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that a horizontal synchronization signal is active, [and] a second one of the
plurality of data bits is set to indicate that a vertical synchronization signal is
active” in claim 5 represents non-functional descriptive material that is not
entitled to patentable weight.

DECISION
The rejection of claims 1-4 and 11-14 under 35 U.S.C. § 103 as being
unpatentable over Seo and Mair is reversed.
The rejection of claims 5, 6, 15, and 16 under 35 U.S.C. § 103 as
being unpatentable over Seo and Mair is affirmed.
The rejection of claims 7-10 and 17-20 under 35 U.S.C. § 103 as
being unpatentable over Seo, Mair, and Santou is 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART

msc

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS MI 48303