Ex Parte HUANG et al

Patent Trial and Appeal Board

May 23, 2016

11735976 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111735,976 04/16/2007
109673 7590 05/25/2016
McClure, Qualey & Rodack, LLP
3100 Interstate North Circle
Suite 150
Atlanta, GA 30339
FIRST NAMED INVENTOR
Jing Jung HUANG
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
251812-1230 2962
EXAMINER
DANG,KHANH
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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):
uspatents@mqrlaw.com
dan.mcclure@mqrlaw.com
gina.silverio@mqrlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JING JUNG HUANG and YI CHIH HUANG
Appeal2014-008220
Application 11/735,976
Technology Center 2100
Before MARC S. HOFF, ELENI MANTIS MERCADER, and JOHN A.
EVANS, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 21, 22, 25, 27, and 28. 2 We have
1 The Appeal Brief identifies Realtek Semiconductor Corporation as the real
party in interest. App. Br. 2.
2 The Examiner refused to enter Claim 3 7, submitted after mailing of the
Final Action, as directed to a non-elected species. App. Br. 2; Final Act. 2.
Because Claim 3 7 is not pending, we do not reach the merits thereof.
Should Appellants contend the Examiner's refusal to enter Claim 37 is
improper, their remedy lies in petition to the Director. See In re Berger,
279 F.3d 975, 984 (Fed. Cir. 2002) (refusal to enter amendment
Appeal2014-008220
Application 11/735,976
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION. 3
STATEMENT OF THE CASE4
The claims relate to a system for bandwidth sharing in busses. See
Abstract.
Claims 21, the only independent claim, is reproduced below with
some formatting added. The claims have not been argued separately and
therefore stand or fall together. 37 C.F.R. § 41.37(c)(l)(iv).
21. A method for managing device access to a priority-based
shared bus among a plurality of bus master devices having
different priorities and a central processing unit, comprising:
setting the central processing unit to have a highest
priority access to the shared bus;
using a timer to establish a predetermined period of time;
sending a plurality of bus request signals by the central
processing unit for requesting access to the shared bus;
sending a predetermined number of bus grant signals by a
petitionable ).
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed April 1, 2014, "App. Br."), the Reply Brief
(filed July 28, 2014, Reply Br."), the Examiner's Answer (mailed June 4,
2014, "Ans."), the Final Action (mailed September 11, 2013, "Final Act."),
and the Specification (filed April 16, 2007, "Spec.") for their respective
details.
4 The present Panel of the Board AFFIRMED the rejection of Claims 21, 22,
and 25-28 in Appeal 2010-010303 mailed May 1, 2013 ("prior Decision").
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Appeal2014-008220
Application 11/735,976
bus arbiter during the predetermined period of time for
responding to the bus request signals and granting the central
processing unit to use the shared bus; and
setting the central processing unit to have a lower priority
access to the shared bus than at least one of the plurality of bus
master devices, in response to a predetermined number of bus
grant signals within the predetermined period of time.
References and Rejections
The Examiner relies upon the prior art as follows:
Drerup
Lee
US 7,065,595 B2
US 7 ,096,293 B2
Filed Jun. 20, 2006
Filed Aug. 22, 2006
Claims 21, 22, 25, 27, and 28 stand rejected under 35 U.S.C. § 103(a)
as obvious over Lee and Drerup. Final Act. 5-11.
ANALYSIS
Based upon our review of the administrative record, Appellants'
contentions, and the Examiner's findings and conclusions, the pivotal issue
before us is whether the Examiner errs in finding the rejection of pending
Claim 21 was previously sustained by the Board.
Appellants contend that our prior Decision addressed the merits of
Claim 21, as it then existed, but that the Board did not reach the merits of
Claim 21 as it is presently amended to contain recitations taken from
canceled Claim 26. App. Br. 4.
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Appeal2014-008220
Application 11/735,976
The Examiner finds that the Board affirmed the rejection of both prior
Claim 21 and prior Claim 26. Ans. 8. We disagree.
We affirmed on the merits the rejection of prior Claim 21. However,
because the remainder of the then-pending claims stood or fell with Claim
21, we did not separately reach the merits of any recitations contained
therein. Decision, 2 ("[t]he claims have not been argued separately and
therefore stand or fall together"). This Board has not considered the merits
of Claim 21 as amended to recite limitations taken from Claim 26, and it is
legal error to suggest otherwise.
We reverse the final rejection of Claims 21, 22, 25, 27, and 28.
NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), Claims 21, 22, 25, 27, and 28 are
hereby rejected under 35 U.S.C. § 103(a) as obvious over Lee and Drerup as
set forth in the rejection of Claims 21 and 26 in the Final Action mailed
August 6, 2009. We adopt the Examiner's reasoning contained therein as our
own.
DECISION
The rejection of Claims 21, 22, 25, 27, and 28 under 35 U.S.C. §103
is REVERSED.
Claims 21, 22, 25, 27, and 28 are subject to a NEW GROUND OF
REJECTION under 35 U.S.C. §103.
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Appeal2014-008220
Application 11/735,976
Rule 37 C.F.R. § 41.50(b) states that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Furthermore, 3 7 C.F .R. § 41. 50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
REVERSED
37 C.F.R. § 41.50(b)
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