Ex Parte Leaming

Board of Patent Appeals and Interferences

Aug 27, 2010

10829007 (B.P.A.I. Aug. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAYLOR J. LEAMING
____________

Appeal 2009-006113
Application 10/829,007
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, 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.

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 4-10, 13-19, 22-28, and 31-35. Claims 2, 3, 11, 12,
20, 21, 29, 30, and 36-41 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

Introduction
According to Appellant, the invention relates to information
processing and storage with respect to smart cards (Spec. 1, ¶ [0001]). A
smart card has an integrated circuit including a transceiver and a processor
that communicate with a host device (Spec. 32, Abstract). The processor
may provide a default descriptor to and cooperate with the host device to
perform an enumeration based on the default descriptor (id.). In response to
a system event detected by the processor, the processor may also provide at
least one alternate descriptor to and cooperate with the host device to
perform a new enumeration based upon the alternate descriptor (id.).

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. An integrated circuit for a smart card comprising:

a transceiver; and

a processor for communicating with a host device over
a system bus via said transceiver, said processor for

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providing at least one default descriptor to the host
device,

cooperating with the host device to perform an
enumeration based upon the at least one default
descriptor, and

providing at least one alternate descriptor to the
host device and cooperating with the host device to
perform a new enumeration based thereon based upon
allocations of system bus bandwidth to other devices
communicating with the host device over the system bus.

Prior Art
The Examiner relies on the following prior art references to show
unpatentability:
Lu US 2005/0108571 A1 May 19, 2005
(filed on May 19, 2004)
Maier US 2005/0251596 A1 Nov. 10, 2005
(filed on July 15, 2003)

Examiner’s Rejection
Claims 1, 4-10, 13-19, 22-28, and 31-35 stand rejected under 35
U.S.C. §103(a) as unpatentable over Maier in view of Lu.

GROUPING OF CLAIMS
Appellant argues claims 1, 4-10, 13-19, 22-28, and 31-35 as a group
on the basis of claim 1 (App. Br. 8-15). We select independent claim 1 as
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the representative claim. We will, therefore, treat claims 4-10, 13-19, 22-28,
and 31-35 as standing or falling with representative claim 1.
We accept Appellant’s grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Appellant argues neither Maier nor Lu teaches the claimed recitation
of “providing at least one alternate descriptor to the host device and
cooperating with the host device to perform a new enumeration based
thereon based upon allocations of system bus bandwidth to other devices
communicating with the host device over the system bus” in claim 1 (App.
Br. 8-15 and Reply Br. 3-4).
Specifically, Appellant argues Maier does not teach that the USB
device detaches and re-attaches itself to the USB bus based upon system bus
bandwidth allocations to other devices communicating with the host device
over the system bus (App. Br. 12 and Reply Br. 4). Instead, according to
Appellant, Maier teaches causing the USB device to appear as a mass
storage device to the host upon re-attachment (App. Br. 12).
Additionally, Appellant argues Maier discloses the USB host, not the
attached smart card, is connected or not connected to the USB device based
on system bus bandwidth already allocated to other peripheral devices
(Reply Br. 3-4). Maier does not teach that “the smart card (e.g., the smart
card processor) that selectively removes its attachment signal from the
system bus and re-enumerates based upon an alternate descriptor[] based
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upon allocations of the system bus bandwidth to other devices
communication with the host device over the system bus” (Reply Br. 4).
The Examiner finds Maier discloses that a bandwidth reservation is
accorded or not by the USB host after an enumeration phase, depending on
the bandwidth that is already reserved by other USB devices that are sharing
the USB bus (Ans. 11). Thus, the Examiner finds that Maier teaches the
card is storing data based on bandwidth reserved by other USB devices (id.).
The Examiner further finds that the claim does not specify how the
“allocating” is performed (id.). Lastly, the Examiner finds that Maier
teaches devices that were previously attached to the host and therefore
teaches detaching and reattaching (id.).

Issue: Has Appellant shown that the Examiner erred in finding that
Maier and Lu, taken alone or in combination, teaches or suggests “providing
at least one alternate descriptor to the host device and cooperating with the
host device to perform a new enumeration based thereon based upon
allocations of system bus bandwidth to other devices communicating with
the host device over the system bus” as recited in claim 1?

FINDINGS OF FACT
Maier Reference
(1) The system includes a USB host connected to a USB device via a
USB bus (pg. 2, ¶ [0028]). Communication between the USB host
and the USB device may be made according to one of four
different transfer modes: a control transfer, an interrupt transfer, a
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bulk transfer and an isochronous transfer (pg. 2, ¶¶ [0029] –
[0033]).

(2) “Two of these four modes require a bandwidth reservation, which
is accorded or not by the USB host after an enumeration phase,
depending on the bandwidth already reserved by other USB
devices, which are plugged onto the USB bus” (pg. 2, ¶ [0034]).

ANALYSIS
Appellant’s arguments that Maier does not teach the USB device
detaches and re-attaches itself to the USB bus based upon an alternate
descriptor based upon system bus bandwidth allocations to other devices
communicating with the host device over the system bus (App. Br. 12 and
Reply Br. 4) is unpersuasive. Appellant is arguing limitations not recited in
the claims (See claims 1, 10, 19, and 28). Specifically, claim 1 does not
recite the integrated circuit, smart card, or processor attaching or reattaching
itself or removing its attachment signal (id.).
Appellant’s further argument that Maier teaches the USB host, not the
attached smart card, is connected or not connected to the USB device based
on system bus bandwidth already allocated to other peripheral devices
(Reply Br. 3-4) is similarly unpersuasive. Claim 1 recites that the processor
of the integrated circuit cooperates “with the host device to perform a new
enumeration based thereon based upon allocations of system bus bandwidth
to other devices” (see also claims 10, 19, and 28). Appellant does not recite
which device performs the new enumeration or allocation and thus,
Appellant is again arguing limitations not recited in the claims. Indeed we
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find Appellant’s arguments improperly attempt to narrow the scope of the
claim 1 by implicitly adding disclosed limitations which have no basis in the
claim 1.
Therefore, Appellant has presented no persuasive arguments or
evidence to show the Examiner erred in finding the combination of Maier
and Lu teach or suggest suggests “providing at least one alternate descriptor
to the host device and cooperating with the host device to perform a new
enumeration based thereon based upon allocations of system bus bandwidth
to other devices communicating with the host device over the system bus” as
recited in claim 1 and analogously recited in claims 10, 19, and 28.
Accordingly, claims 4-10, 13-19, 22-28, and 31-35 fall with claim.
Arguments which Appellant could have made but chose not to make
in the Briefs have not been considered and are deemed to be waived. 37
C.F.R. § 41.37(c)(1)(vii).

CONCLUSION
Accordingly, Appellant has not shown the Examiner erred in rejecting
claims 1, 4-10, 13-19, 22-28, and 31-35 under 35 U.S.C. § 103(a) as
unpatentable over Maier in view of Lu.

DECISION
We affirm the Examiner’s rejection of claims 1, 4-10, 13-19, 22-28,
and 31-35 under 35 U.S.C. § 103(a) as unpatentable over Maier in view of
Lu.
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).
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AFFIRMED

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