Ex Parte Murray

Board of Patent Appeals and Interferences

Apr 27, 2003

08949534 (B.P.A.I. Apr. 27, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 67
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID E. MURRAY
____________
Appeal No. 2002-2112
Application No. 08/949,534
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON, and BARRETT, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3
through 7, 9 through 13 and 15 through 21.
The disclosed invention relates to an apparatus for providing
audio, modem and facsimile processing capabilities to a computer
system.
Appeal No. 2002-2112
Application No. 08/949,534
2
Claim 1 is illustrative of the claimed invention, and it reads
as follows:
1. An apparatus for providing audio and modem and fax
processing capabilities to a computer system having an I/O bus, the
modem and fax capabilities used with a telecommunication link, said
apparatus comprising:
an option card, comprising:
means for interfacing with said I/O bus for
transferring data;
a digital signal processor on said option card
coupled to said interfacing means for performing a plurality of
audio processing functions for the computer system;
a daughter board connector connected to said digital
signal processor; and
a daughter board connectable to the
telecommunications link and removably connected through said
daughter board connector to said digital signal processor on said
option card, said daughter board having circuitry which when
combined with said digital signal processor loaded with modem and
fax software adds modem and fax functions to said computer system.
Appeal No. 2002-2112
Application No. 08/949,534
1 Appellant has not made an issue of the fact that this date
is after the original application filing date of July 19, 1993.
2 We note again that appellant has not made an issue of the
fact that this date is after the original application filing
date.
3
The references relied on by the examiner are:
Davis et al. (Davis) 4,991,169 Feb. 5, 1991
O’Connell 5,331,111 July 19, 1994
(filed Oct. 27, 1992)
McLaughlin et al. (McLaughlin) 5,687,222 Nov. 11, 1997
(effective filing date July 26, 19941)
Ninomiya et al. (Ninomiya) 6,088,620 July 11, 2000
(filed Sept. 20, 19962)
Claims 1, 3 through 7, 9 through 13 and 15 through 21 stand
rejected under the second paragraph of 35 U.S.C. § 112 as being
indefinite for failing to particularly point out and distinctly
claim the subject matter which appellant regards as the invention.
Claims 1, 3 through 7, 9 through 13 and 15 through 21 stand
rejected under the first paragraph of 35 U.S.C. § 112 for lack of
enablement.
Claims 1, 3 through 7, 9 through 13 and 15 through 21 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
O’Connell in view of Davis.
Appeal No. 2002-2112
Application No. 08/949,534
3 We agree with appellant’s argument (brief, page 24) that
he has limited his admission of prior art to Figure 1. No amount
of discussion of Figure 2 will convert the subject matter
disclosed therein into admitted prior art (answer, pages 8 and
9).
4 We disagree with appellant’s statement (brief, page 18)
that “[a] technique cannot be both non-enabled yet obvious.” We
are not aware of any Office policy or case law that prohibits
both a lack of enablement rejection and an obviousness rejection
of the same claims.
4
Claims 1, 3 through 7, 9 through 13 and 15 through 21 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
admitted prior art3 in view of Davis.
Claims 1, 3 through 7, 9 through 13 and 15 through 21 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Ninomiya in view of McLaughlin.
Reference is made to the briefs (paper numbers 62 and 64) and
the answer (paper number 63) for the respective positions of the
appellant and the examiner.
OPINION
For substantially all of the reasons expressed by the
appellant4, and for the additional reasons set forth infra, we will
reverse all of the rejections of record.
Turning first as we must to the indefiniteness rejection, the
examiner is of the opinion (answer, page 6) that the claimed
Appeal No. 2002-2112
Application No. 08/949,534
5 Being mindful of the written description portion of the
first paragraph of 35 U.S.C. § 112.
5
invention should be limited to the daughterboard, as opposed to the
now claimed combination of the daughterboard and a sound card.
Inasmuch as appellant’s disclosed and claimed invention is
expressly directed to the combination of a sound card and a
daughterboard, we disagree with the examiner’s premise that
appellant must claim that which the examiner deems to be
appellant’s invention. In other words, appellant has the right to
claim that which he regards as his invention5. With respect to the
examiner’s insistence (answer, pages 6 and 7) that the appellant
recite more functions of the components, and how they “functionally
coact with each other such that meaningful results can be
achieved,” we find that this demand by the examiner is equally
without merit since appellant has the right to claim his invention
in as broad terms as the disclosure and the prior art will allow
without reciting all of the functional coaction between the
components as requested by the examiner. Thus, the indefiniteness
rejection of all of the claims on appeal is reversed because “[i]n
light of Appellant’s Specification, one of ordinary skill in the
art would understand that a daughter board, such as one containing

Appeal No. 2002-2112
Application No. 08/949,534
6 According to appellant, a coder-decoder (CODEC) performs
analog to digital (A/D) and digital to analog (D/A) conversion
(specification, page 2), a data access arrangement (DAA)
“electrically isolates the modem from the phone line to control
emissions of electro-magnetic interference/radio frequency
interference (EMI/RFI) [,] . . . isolates the received [signal]
from the transmitted analog signals, and develops a digital ring
signal to inform the computer system to answer” (specification,
page 2), and a digital signal processor (DSP) performs the named
function. Several manufacturers and model numbers of DSPs for
specialized functions are disclosed by appellant (specification,
pages 11 and 14), and discussed in the Edward Newman Rule 312
declaration of record (paragraphs 9 and 10).
6
a CODEC and DAA, and a DSP6 of a sound card loaded with modem and
fax software in combination provide modem and fax software
functions to a computer system” (brief, page 19).
Turning next to the lack of enablement rejection, the examiner
is of the opinion (answer, pages 5 and 6) that it would take undue
experimentation to “convert or program an audio DSP which is made
and programmed for processing audio signals to adittionally [sic,
additionally] process fax and modem.” In the absence of a
convincing line of reasoning by the examiner for not accepting the
disclosed explanation (specification, page 12) of how the DSP is
further programmed to perform the additional functions of a fax and
modem via software stored in RAM 72 (Figure 2), we agree with
appellant’s arguments (brief, page 11) that the “disclosure is
presumptively accurate,” and that “[t]he Examiner has not shown a
Appeal No. 2002-2112
Application No. 08/949,534
7 See the discussion of Davis (answer, page 8).
7
sufficient reason to doubt the truth or accuracy of Appellant’s
Specification.” We additionally agree with the appellant’s
argument (brief, page 13) that:
Paragraph 9 of the Declaration indicates that one of
ordinary skill in the art would have known of modules to
implement a fax/modem with a DSP, citing a specific DSP
and a specific source for such modules. Paragraph 10 of
the Declaration then indicates that one of ordinary skill
in the art would have known of modules to implement a
sound card with a DSP, again citing a specific DSP and
source for such modules. However, no suggestion is made
in the Declaration that it was known to implement a sound
card with both capabilities, as in Appellants’ [sic,
Appellant’s] claimed subject matter. “Given the
teachings of the specification” and based on all of the
above, the Newman Declaration states that one skilled in
the art would be able to make and use the invention as
claimed without undue experimentation.
In light of the disclosure, the declaration, the prior art of
record that uses DSPs7 and the lack of a definitive and convincing
reason for questioning the enablement of the disclosure, we find
that the burden of coming forward with evidence of enablement never
passed to appellant. For this reason, the lack of enablement
rejection of all of the claims on appeal is reversed.
Turning to the obviousness rejection of all of the claims on
appeal based upon the teachings of O’Connell and Davis, the
examiner indicates (answer, page 7) that O’Connell discloses an I/O
Appeal No. 2002-2112
Application No. 08/949,534
8
bus 12, a DSP 18, a daughterboard 25 and a daughterboard connector
(i.e., “the circuit in O’Connell which connects the DSP card to the
A/D interface 25”). According to the examiner (answer, page 7),
“O’Connell discloses in lines 16-22 of column 5 that the optional
A/D interface 25 (CODEC of the instant invention) is for importing
sound from other sources such that DSP 18 which is designed for
processing signals from MIDI 21 can also be used to process
sounds.” The examiner admits (answer, page 8) that “O’Connell does
not state that the DSP is capable of functioning as modem and fax
via the A/D interface 25.” Based upon Davis’ teaching “that a dsp
can be programmed to function as modem (see abstract) and fax (col.
18 line 31),” the examiner contends (answer, page 8) that it would
have been obvious to one of ordinary skill in the art “to program
the dsp of O’Connell to function as modem and fax.”
Appellant argues (brief, pages 22 and 23) that the A/D
interface 25 in O’Connell does not correspond to either the claimed
daughterboard for providing fax and modem functions or the claimed
coder-decoder, and that “[e]ven if Davis teaches a DSP to function
as a modem, Davis and O’Connell in combination fail to teach or
suggest a DSP on a sound card connected to a daughter board for
providing fax/modem functions.”
Appeal No. 2002-2112
Application No. 08/949,534
8 It appears that the examiner has mistakenly labeled Figure
3 of the drawing as admitted prior art along with Figure 2 of the
drawing (answer, page 9).
9
We agree with appellant’s arguments that the A/D interface 25
in O’Connell is incapable of performing both coder-decoder
functions, and it does not include daughterboard circuitry that
functions in concert with a DSP to provide fax and modem functions.
Thus, even if the DSP in O’Connell is reprogrammed to handle fax
and modem functions as taught by Davis, the applied reference would
still neither teach nor would have suggested to the skilled artisan
a daughterboard with fax and modem circuitry that will operate with
the reprogrammed DSP to provide fax and modem functions as claimed.
In short, the obviousness rejection of all of the claims on appeal
based upon the teachings of O’Connell and Davis is reversed.
In the obviousness rejection of all of the claims on appeal
based upon the admitted prior art and Davis, we agree with the
examiner (answer, page 8) that Figure 1 of the disclosed drawing is
admitted prior art, but we disagree with the examiner (answer,
pages 8 and 9) that Figure 2 is admitted prior art8. In light of
this glaring error, the obviousness rejection of all of the claims
on appeal based upon the examiner’s proposed modification of
Appeal No. 2002-2112
Application No. 08/949,534
9 An obviousness rejection can not be established via the
use of impermissible hindsight.
10 If by chance Figure 1 was the intended figure, we agree
with the appellant’s argument (brief, page 24) that “Figure 1 and
Davis in combination fail to teach or suggest a daughter board,
such as one containing a DAA and CODEC, connected to a DSP of a
sound card, where a memory coupled to the DSP is loaded with
fax/modem software and sound card software.”
10
appellant’s own disclosure9 (i.e., Figure 210 and supposedly Figure
3) with the teachings of Davis is reversed.
Turning lastly to the obviousness rejection of all of the
claims on appeal based upon the “host CPU 11, buses, memories,
controller 14, modem CODEC 152, sound CODEC 153 and DSP 151 for
processing sound, modem and fax” teachings of Ninomiya, and the
programming of a DSP to function as a “sound card, modem and fax”
teachings of McLaughlin (answer, page 9), we agree with the
appellant (brief, pages 25 and 26) that:
Ninomiya does not teach or suggest that the DSP 151 is
loaded with “modem and fax software.” Further, Ninomiya
does not teach or suggest that the modem CODEC 153 [sic,
152] is part of a daughter board connected to the DSP
151. Finally, as recognized by the Examiner, Ninomiya
fails to recite a DAA. Even if McLaughlin can be used to
show inherency of a DAA, which Appellant does not admit,
Ninomiya thus fails to teach or suggest all of
Appellant’s claimed elements.
In summary, the obviousness rejection of all of the claims on
appeal based upon the teachings of Ninomiya and McLaughlin is
Appeal No. 2002-2112
Application No. 08/949,534
11
reversed based upon the appellant’s argument, and the fact that the
references have filing dates after the July 19, 1993 filing date of
the subject application.
DECISION
As indicated supra, all of the rejections of record are
reversed. Accordingly, the decision of the examiner is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
KWH/lp
Appeal No. 2002-2112
Application No. 08/949,534
12
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