Ex Parte Kwon et alDownload PDFPatent Trial and Appeal BoardApr 28, 201411589856 (P.T.A.B. Apr. 28, 2014) Copy Citation 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. 11/589,856 10/31/2006 Kwang Hun Kwon 8736.062.20 5735 7590 04/28/2014 MCKENNA LONG & ALDRIDGE LLP Song K. Jung 1900 K Street, N.W. Washington, DC 20006 EXAMINER PENG, HSIUNGFEI ART UNIT PAPER NUMBER 2426 MAIL DATE DELIVERY MODE 04/28/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KWANG HUN KWON and SANG HOON CHA ____________ Appeal 2011-013320 Application 11/589,856 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, JOHNNY A. KUMAR, and CATHERINE SHIANG, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013320 Application 11/589,856 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, 8-11, 17-20, 26-29, 35, and 36. Claims 3-7, 12-16, 21-25, and 30-34 have been cancelled. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claim 1. A host interfacing with a cable card in an open cable system, the host comprising: a plurality of Digital Visual Interface (DVI) ports; and a controller configured to receive a DVI diagnostic request including a single diagnostic identifier for identifying multiple diagnostics for the plurality of DVI ports from the cable card, generate DVI status information in response to the DVI diagnostic request, and forward the generated DVI status information to the cable card through a central processing unit (CPU) interface between a CPU of the host and a CPU of the cable card, wherein the DVI status information including the multiple diagnostics identified by the same diagnostic identifier is transmitted to the cable card through the CPU interface. Rejection on Appeal The Examiner rejected claims 1, 2, 8-11,17-20, 26-29, 35, and 36 under 35 U.S.C. § 103(a) as being unpatentable over Applicant’s Admitted Prior Art (AAPA) in view of Iwamura (US 5,883,621, Mar. 16, 1999). Ans. 3-5. Appeal 2011-013320 Application 11/589,856 3 II. ISSUE Did the Examiner err in concluding that the combination of AAPA and Iwamura renders independent claims 1, 10, 19, and 28 unpatentable?1 In particular, the issue turns on whether the Examiner provides an articulated reason with some rational underpinning to combine AAPA and Iwamura. III. ANALYSIS 35 U.S.C. § 103(a) Rejection—Rationale to Combine Appellants contend the Examiner does not provide a sufficient rationale to combine AAPA and Iwamura. Br. 11-13. In particular, Appellants contend that “the combination of AAPA and Iwamura would not have derived to the [sic] claimed invention because Iwamura’s system requires nodes having separate unique identifiers.” Id. at 11. The Examiner finds: step 402 (Bus Initialization Col. 4, lines 59-67) [in Iwamura] teaches collecting all ports status information in one time to the system during bus initialization; therefore, Iwamura teaches the bus initialization process provides diagnostic request result and status information for the same type (1394) of the plurality ports to the central CPU 312 according to a network to the IEEE 1394 standard (see Col. 3, lines 20-Col. 4, lines 54). In view of that, one of ordinary skill in the art would be motivate[d] to modify []AAPA by integrating the “1394 Bus Initialization” process, as taught by Iwamura, in order to obtain the diagnostic report of plurality of DVI ports in a single diagnostic request thereby to improve time of the diagnostic process. 1 Independent claims 10, 19, and 28 recite subject matter similar to independent claim 1. Br. 10-11. Appeal 2011-013320 Application 11/589,856 4 Ans. 7. The U.S. Supreme Court has held 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). The Court further instructs that: [o]ften it will be necessary for a court to look to interrelated teachings of multiple patents; . . . and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason for combining the known elements in a the fashion claimed by the patent at issue. Id. at 418. Additionally, the Court instructs that: [r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness . . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. (citation and internal quotation marks omitted). We find that the ordinarily skilled artisan, being a creative individual would have been able to fit the teachings of AAPA and Iwamura (including established knowledge in the art) together like pieces of a puzzle to predictably result in the disputed limitations. In particular, we agree with the Examiner that the proffered combination of AAPA and Iwamura would predictably result in a diagnostic report of a plurality of DVI ports in a single diagnostic request thereby reducing the diagnostic process time. Ans. 7. In Appeal 2011-013320 Application 11/589,856 5 our view, such a statement suffices as an articulated reason with a rational underpinning to support the proffered combination. As noted above, the case law allows the Examiner to look to the state of the prior art, including the knowledge of the ordinarily skilled artisan to arrive at such a reason for combining the known elements of the prior art. Consequently, the Examiner’s reliance upon widely available knowledge in order to arrive at an articulated reason with a rational underpinning to support the proffered combination is proper. We observe that no Reply Brief is of record to rebut such findings including the Examiner’s responses to Appellants’ arguments. Therefore, in the absence of sufficient rebuttal evidence or argument to persuade us otherwise, we adopt the Examiner’s findings and underlying reasoning (Ans. 6-7), which are incorporated herein by reference. Consequently, we find no error in the Examiner’s rejection of claims 1, 10, 19, and 28. Dependent claims 2, 8, 9, 11, 17, 18, 20, 26, 27, 29, 35, and 36, not separately argued, fall with claims 1, 10, 19, and 28, respectively. See 37 C.F.R. § 41.37(c)(1)(vii). IV. CONCLUSION The Examiner has not erred in rejecting claims 1, 2, 8-11, 17-20, 26- 29, 35, and 36 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We affirm the Examiner’s decision to reject claims 1, 2, 8-11, 17-20, 26-29, 35, and 36. Appeal 2011-013320 Application 11/589,856 6 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 msc Copy with citationCopy as parenthetical citation