Ex Parte Kumar

Board of Patent Appeals and Interferences

Feb 23, 2011

11304358 (B.P.A.I. Feb. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SASI K. KUMAR
____________

Appeal 2009-008200
Application 11/304,358
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

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Application 11/304,358

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Invention
Appellant’s invention is directed to a method and system for a
hardware based implementation of USB 1.1 over a high speed link. (Spec.
5).

Representative Claim
1. A method for communicating via a bus interface in a
network, the method comprising:

translating at a client side of a client server
communication system, encapsulated USB protocol messages
to corresponding USB protocol messages comprising a first
USB standard, wherein said encapsulated USB protocol
messages were translated from a second USB standard at a
server side of said client server communication system prior to
being received at said client side of said client server
communication system via a network.

Examiner’s Rejection
1. Claims 1-21 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Toebes (US Pat. App. Pub. 2006/0123166
and Official Notice.1

Claims 1-7, 9-17, and 19-21
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding
claims 1-7, 9-17, and 19-21:

1 Nomura (US Pat. App. Pub. 2006/0045037) is relied on by the Examiner as
evidence in support of Official Notice. (Ans. 5).
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Under §103, did the Examiner err in finding that Toebes
and Official Notice would have taught or suggested
“wherein said encapsulated USB protocol messages were
translated from a second USB standard at a server side,”
within the meaning of independent claims 1 and 11?

FINDINGS OF FACT
1. Toebes teaches a translation module 335 depicted within a
Universal Serial Bus (USB) server 120 where “translation
module 335 is generally configured to translate USB messages
to network messages (e.g., IP packets) for sending USB
messages received from host computer 105 as network
messages over data network 115 . . . .” (Fig. 4A; para. [0040]).
2. Toebes teaches a translation module 360 depicted within a
Universal Serial Bus (USB) client “to translate USB messages
to network messages (e.g., IP packets) for sending USB
messages received from USB device 110 as network messages
over data network 115, and to translate network messages
received from data network 115 to USB format for delivery to
USB device 110.” (Fig. 4B; para. [0043]).
3. Toebes teaches the use of both the USB 1.1 and 2.0 protocols.
(para. [0063]).
4. Nomura provides evidence that different USB standards are
interoperable. (paras. [0027-0028]).

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Claim Grouping
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of representative claims 1 and 8. See 37 C.F.R.
§ 41.37(c)(1)(vii).2

ANALYSIS
Appellant urges the patentability of representative claim 1, as
follows:
Appellant respectfully asserts that the combination of
Toebes and Nomura does not disclose or suggest at least
“said encapsulated USB protocol messages were
translated from a second USB standard at a server side,”
as claimed by the Appellant in independent claim 1.
Instead, Toebes in paragraph 40 states that the
“translation module 335 is generally configured to
translate USB messages to network messages (e.g., IP
packets) for sending USB messages received from host
computer 105 as network messages over data network
115.” See Toebes at paragraph 0040, lines 9-13. The
Appellant submits that translating USB messages to
network messages at the host computer 105 is not
equivalent to translating USB protocol messages of a
second USB standard to encapsulated USB protocol
messages at a server side, as claimed by the Appellant in
independent claim 1.

(App. Br. 7-8).

2 While Appellant “reserves the right to argue additional reasons” for
various dependent claims in the principal Brief (12 et seq.), this decision
considers only those arguments actually made. Arguments that Appellant
could have made but chose not to make in the Brief are waived. See 37
C.F.R. § 41.37(c)(1)(vii).
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Claim Construction
We begin our analysis by concluding that a broad but reasonable
interpretation of representative claim 1 places no limitation on the specific
properties or characteristics associated with the recited “encapsulated USB
protocol messages.” (Claim 1). We find the disclosures in the Specification
(e.g., paras. 41, 44, 46) to be exemplary and insufficient to provide a person
of ordinary skill in the art with clear and precise notice of the meaning that is
to be construed. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
(although an inventor is free to define the specific terms used to describe the
invention, this must be done with reasonable clarity, deliberateness, and
precision; where an inventor chooses to give terms uncommon meanings, the
inventor must set out any uncommon definition in some manner within the
patent disclosure so as to give one of ordinary skill in the art notice of the
change).
Moreover, Appellant’s Specification expressly guides the artisan that
“it is intended that the present invention not be limited to the particular
embodiment disclosed, but that the present invention will include all
embodiments falling within the scope of the appended claims.” (Spec. 18)
(underline added). We also note that because “applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health and 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)).

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Given this context, we broadly but reasonably construe the recited
“encapsulated USB protocol messages” (claim 1) as encompassing any
alternative form of sending or receiving USB messages, such as
sending/receiving encapsulated USB messages within the context of another
protocol.3
Given this construction, we conclude that the broad language of
representative claim 1 does not preclude the Examiner’s interpretation as
articulated on pages 5-7 of the Answer. Based upon our review of the
record, we find unpersuasive Appellant’s contention that “translating USB
messages to network messages at the host computer 105 is not equivalent to
translating USB protocol messages of a second USB standard to
encapsulated USB protocol messages at a server side.” (App. Br. 8, ¶1) (bold
in original, underline added).
In particular, we observe that Toebes teaches a translation module 335
depicted within a USB server 120 where “translation module 335 is
generally configured to translate USB messages to network messages (e.g.,
IP packets) for sending USB messages received from host computer 105 as
network messages over data network 115 . . . .” (FF 1). Given this teaching,
we find Toebes would have taught or suggested translating USB messages to
“encapsulated USB protocol messages” that are sent from the server to the
client using another protocol (e.g., IP protocol), in accordance with our
aforementioned claim construction. (FF 1).

3 “[T]he PTO gives claims their ‘broadest reasonable interpretation.’” In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000)).

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On the client side, Toebes’ translation module 360 (shown within the
USB client in Fig. 4B) “translates network messages received from data
network 115 (i.e., ‘encapsulated USB protocol messages’ e.g., sent/received
via the IP protocol) to USB format for delivery to USB device 110.” (FF 2).
Regarding the claimed first and second USB standards, Toebes
expressly teaches the use of both the USB 1.1 and 2.0 protocols (FF 3), as
pointed out by the Examiner. (Ans. 5). The Supreme Court has provided
clear guidance that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007). This reasoning is applicable here.
As to the Examiner’s reliance on Official Notice (Ans. 3, 5), we note
that the Examiner may take notice of facts or common knowledge in the art
which are capable of such instant and unquestionable demonstration as to
defy dispute. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). To
adequately traverse the Examiner’s reliance on Official Notice, Appellant
must specifically point out the supposed errors in the Examiner's action,
which would include stating why the noticed fact is not considered to be
common knowledge or well-known in the art. See MPEP § 2144.03. Here,
Appellant has not stated in the record why the noticed fact is not considered
to be common knowledge or well-known in the art.
In particular, the Examiner takes Official Notice that Nomura
evidences “different USB standards are operable within the same circuit,”
and that “the advantage of the USB 2.0 standard is that it is backward
compatible with previous standards, such as the USB 1.1 standard.” (Ans.
5). The Examiner further finds that “[t]his is so well known, and the
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evidence for this assertion is so copious that the Examiner relies on Official
Notice for this express acknowledgement of backward compatibility.” (Id.).
On this record, we are in accord with the Examiner’s taking of Official
Notice regarding the aforementioned findings. See FF 4.
In the Reply Brief, Appellant presents a new argument contending
that “[n]o reason has been shown why one of ordinary skill would combine
these references to produce the claimed combination, particularly in view of
Nomura.” (Reply Br. 6). However, Appellant’s argument is untimely and is
subject to waiver. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.”).
For the aforementioned reasons, we are in accord with the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness for
representative claim 1. Therefore, we affirm the obviousness rejection of
claim 1, as well as claims 2-7, 9-17, and 19-20 (not argued separately) which
fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 8 and 18
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding
claims 8 and 18:

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Under §103, did the Examiner err in finding that Toebes
and Official Notice would have taught or suggested a
server that comprises a USB interface that is second USB
standard compliant, within the meaning of dependent
claims 8 and 18?
For essentially the same reasons discussed supra regarding claim 1,
we find unavailing Appellant’s contention that “Toebes does not disclose or
suggest a server that comprises a USB interface that is USB 2.0 or second
USB standard compliant, as claimed by the Appellant in dependent claim 8.”
(App. Br. 14-15).
In particular, we observe that Appellant’s argument is not
commensurate with the scope of claims 8 and 18, which are silent regarding
any mention of USB 2.0. Nevertheless, within the broad scope of
Appellant’s claims, we conclude that the claimed first and second USB
standards encompass both the 1.1 and 2.0 standards respectively, or vice
versa.
Moreover, we find the evidence before us strongly supports the
Examiner’s position. As discussed above, Toebes expressly teaches the use
of both the USB 1.1 and 2.0 protocols (FF 3), as pointed out by the
Examiner. (Ans. 5). We additionally observe that Toebes expressly teaches
a USB Interface Module 330 shown within USB server 120. (Fig. 4A). “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR 550 U.S.
at 416.

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This reasoning is applicable here. Therefore, we are in accord with
the Examiner’s finding that Toebes and Official Notice would have taught or
suggested a server that comprises a USB interface that is second USB
standard compliant, within the meaning of dependent claims 8 and 18.
On this record, we find Appellant’s arguments unpersuasive of
Examiner error regarding dependent claims 8 and 18. Therefore, we affirm
the Examiner’s § 103 rejection of claims 8 and 18.

DECISION
We affirm the § 103 rejections of claims 1-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

pgc

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