Ex Parte Kuwahara

Board of Patent Appeals and Interferences

Jun 23, 2003

08833302 (B.P.A.I. Jun. 23, 2003)

1- –
The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MASANORI KUWAHARA

Appeal No. 2001-2100
Application No. 08/833,302

ON BRIEF

Before FLEMING, RUGGIERO, and SAADAT, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-10, which are all of the claims pending in the present
application.
The claimed invention relates to control equipment for an
asynchronous transfer mode (ATM) communication system in which a
test cell generating circuit is provided within a transmission
Appeal No. 2001-2100
Application No. 08/833,302
2- –
system in the control equipment. Further provided is a loop back
circuit which permits test cells generated within the
transmission system to be supplied to a receiving system in the
control equipment. According to Appellant (specification, pages
6 and 7), since the ATM control equipment provides its own
testing functionality, the time and expense of providing
dedicated external testing equipment is avoided.
Claim 1 is illustrative of the invention and reads as
follows:
1. A communication control equipment used for ATM
communication including a transmission system adapted so that
data cell sent from an ATM layer control unit is inputted thereto
to convert the data cell into frame data to transmit the frame
data to transmission line, a receiving system adapted so that the
frame data sent from the transmission line is inputted thereto to
convert the frame data into data cell to transmit the data cell
to the ATM layer control unit, and a loop-back line or circuit
for carrying out loop-back of the data cell inputted to the
transmission system to deliver the data cell to the receiving
system,
wherein the transmission system comprises a transmission
cell processing section including:
an idle cell generating circuit for generating and
outputting idle cell;
a test cell generating circuit for generating and outputting
test cell; and
selector means operative so that when data cell sent from
the ATM layer control unit is delivered thereto, the selector
means outputs the data cell, when output of test cell is
designated and no data cell exists, the selector means outputs
Appeal No. 2001-2100
Application No. 08/833,302
1 The Appeal Brief was filed October 16, 2000 (Paper No. 17). In
response to the Examiner’s Answer dated January 2, 2001 (Paper No. 18), a
Reply Brief was filed February 8, 2001 (Paper No. 19), which was acknowledged
and entered by the Examiner as indicated in the communication dated March 7,
2001 (Paper No. 20).
3- –
the test cell which the test cell generating circuit outputs, and
when no data cell exists and output of the test cell is not
designated, the selector means outputs the idle cell which the
idle cell generating circuit outputs.
The Examiner relies on the following prior art:
Takizawa et al. (Takizawa) 5,515,386 May 07, 1996
(filed Sep. 23, 1994)
Yoshimura et al. (Yoshimura) 5,602,826 Feb. 11, 1997
(filed Nov. 30, 1995)
Claims 1-10, all of the appealed claims, stand finally
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Yoshimura in view of Takizawa.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, the arguments in support
of the rejection and the evidence of obviousness relied upon by
the Examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
Appeal No. 2001-2100
Application No. 08/833,302
4- –
Appellant’s arguments set forth in the Briefs along with the
Examiner’s rationale in support of the rejection and arguments in
rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-10. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
Appeal No. 2001-2100
Application No. 08/833,302
5- –
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claims 1, 3, 6, and 7 based on the proposed
combination of Yoshimura and Takizawa, Appellant asserts that the
Examiner has failed to establish a prima facie case of
obviousness since all of the limitations of claims 1, 3, 6, and 7
are not taught or suggested by the applied prior art references,
either separately or in combination. At pages 11-13 of the
Brief, Appellant’s arguments focus on the contention that neither
Yoshimura nor Takizawa disclose the particular claimed protocol
for selecting among data cells, idle cells, and test cells.
After careful review of the applied Yoshimura and Takizawa
references, in light of the arguments of record, we are in
general agreement with Appellant’s position as stated in the
Briefs. We note that independent claim 1 sets forth the three
Appeal No. 2001-2100
Application No. 08/833,302
6- –
condition cell selection protocol in the following language
(similar recitations of which appear in the other independent
claims 3, 6, and 7):
... when data cell sent from the ATM layer control
unit is delivered thereto, the selector means
outputs the data cell, when output of test cell is
designated and no data cell exists, the selector
means outputs the test cell which the test cell
generating circuit outputs, and when no data cell
exists and output of the test cell is not designated,
the selector means outputs the idle cell which the
idle cell generating circuit outputs.
We find no disclosure in the Yoshimura reference, primarily
relied on by the Examiner as teaching the claimed selection
protocol, that would satisfy the requirements of the appealed
claims. In particular, although Yoshimura suggests (e.g., column
3, lines 36-39) that test cells are generated in relation to the
timing of idle cells, we find no apparent disclosure in Yoshimura
of the generation of idle cells on the condition that no data
cell exists and there is no designation of the output of test
cells as claimed.
We also agree with Appellant (Reply Brief, pages 2 and 3)
that the Examiner has improperly disregarded the claim language
directed to the claimed loop-back circuit feature. Our reviewing
courts have held that, in assessing patentability of a claimed
invention, all the claim limitations must be suggested or taught
Appeal No. 2001-2100
Application No. 08/833,302
7- –
by the prior art. In re Royka, 490 F.2d 981, 984-85, 180 USPQ
580, 582-83 (CCPA 1974). All words in a claim must be considered
in judging the patentability of that claim against the prior art.
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Further, although the Examiner asserts (Answer, page 6) that the
“loop back” language appears only in the claim preamble, we find
this to not be the case. Our review of the language of claim 1,
for example, reveals that the loop-back circuit is positively
recited as one of the elements included in the communication
control equipment along with a transmission system and a
receiving system.
We also recognize that the Examiner argues that, regardless
of whether the “loop back” language is considered a positive
recitation, “‘loop back’ is a well known technique for testing
and checking channels.” (Answer, page 6). We find, however, no
evidence forthcoming from the Examiner that would support such a
conclusion. The Examiner must not only make requisite findings,
based on the evidence of record, but must also explain the
reasoning by which the findings are deemed to support the
conclusion of obviousness. See In re Lee, 277 F.3d 1338, 1343,
61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002).
Appeal No. 2001-2100
Application No. 08/833,302
8- –
We have also reviewed the Takizawa reference which is
applied by the Examiner to supply a teaching of the use of an
idle cell generating circuit for generating idle cells. We find
nothing, however, in the disclosure of Takizawa that would
overcome the deficiencies of Yoshimura discussed supra.
In view of the above discussion, it is our view that, since
all of the limitations of the appealed claims are not taught or
suggested by the applied prior art Yoshimura and Takizawa
references, the Examiner has not established a prima facie case
of obviousness. Accordingly, the 35 U.S.C. § 103(a) rejection of
independent claims 1, 3, 6, and 7, as well as claims 2, 4, 5, and
8-10 dependent thereon, is not sustained.
Appeal No. 2001-2100
Application No. 08/833,302
9- –
In conclusion, we have not sustained the Examiner’s 35
U.S.C. § 103(a) rejection of any of the claims on appeal.
Therefore, the decision of the Examiner rejecting claims 1-10 is
reversed.
REVERSED

MICHAEL R. FLEMING )
Administrative Patent Judge)
)
)
)
)
JOSEPH F. RUGGIERO )BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
)INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge)
JFR/dal
Appeal No. 2001-2100
Application No. 08/833,302
10- –
HOGAN & HARTSON L.L.P.
500 S. GRAND AVENUE
SUITE 1900
LOS ANGELES CA 90071-2611