Ex Parte Noda et al

Board of Patent Appeals and Interferences

Oct 27, 2006

09797872 (B.P.A.I. Oct. 27, 2006)

The opinion in support of the decision being entered today was not written for
publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte TAKURO NODA, YOSHIAKI TAKENAKA,
YOSHIYUKI TAKAKU, and HIRAKU INOUE
_____________

Appeal No. 2006-2452
Application No. 09/797,872
______________

HEARD: Oct. 17, 2006
_______________

Before THOMAS, 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 1-9,
which are all of the claims pending in this application.
The claimed invention relates to a method and system for establishing
communication between a controlling device and a controlled device which are
interconnected via a data bus which complies with a predetermined
communication format permitting data exchange between the devices. After
transmission of a command from the controlling device to the controlled device
during a communication transaction, a determination is made as to whether a

Appeal No. 2006-2452
Application No. 09/797,872

response received by the controlling device from the controlled device is an
interim response. If the response is determined to be an interim response, the
controlling device terminates the transaction without waiting for a final response
from the controlled device.
Claim 1 is illustrative of the invention and reads as follows:
1. An electronic device system having a controlling device and a controlled
device interconnected via a data bus which complies with a predetermined
communication format and which allows data to be exchanged between the
devices, said electronic device system comprising:

means for causing said controlling device to transmit a command to
said controlled device over said data bus in a transaction;

means for allowing said controlling device to receive a response
returned within a first predetermined period by said controlled device over said
data bus in response to the transmitted command during said transaction;

means for judging whether the response received by said
controlling device is an interim response corresponding to when said controlled
device determines that the transmitted command has been received and that a
transmission of a final response is impossible within a second predetermined
period less than the first predetermined period; and

means for immediately terminating said transaction without waiting
for reception of said final response from said controlled device if said judging
means judges the response received by said controlling device to be said interim
response, said means for terminating including means for recognizing a
command transmission error when said controlling device does not receive a
response within said first predetermined period.

The Examiner relies on the following prior art:
Hoekstra et al. 5,754,548 May 19, 1998
(Hoekstra)

Kagawa 6,160,637 Dec. 12, 2000
(filed Mar. 26, 1998)

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Application No. 09/797,872

Ishiwatari et al. JP 359172862 Sep. 29, 1984
(Ishiwatari)

Kawamura et al. EP 0 812 092 Oct. 12, 1997
(Kawamura)

Claims 1-9, all of the appealed claims, stand finally rejected under
35 U.S.C. § 103(a). As evidence of obviousness, the Examiner offers Kawamura
in view of Hoekstra and Kagawa with respect to claims 1, 2, 4, 5, 7, and 8, and
adds Ishiwatari to the basic combination with respect to claims 3, 6, and 9.
Rather than reiterate the arguments of Appellants 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 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, Appellants’ 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

1 The Appeal Brief was filed November 28, 2005. In response to the
Examiner’s Answer mailed January 18, 2006, a Reply Brief was filed March 20,
2006, which was acknowledged and entered by the Examiner as indicated in the
communication dated April 11, 2006.
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Application No. 09/797,872

one of ordinary skill in the art the obviousness of the invention as set forth in
claims 1-9. 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). The Examiner must articulate reasons for the
Examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1433
(Fed. Cir. 2002). In particular, the Examiner must show that there is a teaching,
motivation, or suggestion of a motivation to combine references relied on as
evidence of obviousness. Id. 277 F.3d at 1343, 61 USPQ2d at 1433-34. The
Examiner cannot simply reach conclusions based on the examiner’s own
understanding or experience – or on his or her assessment of what would be
basic knowledge or common sense. Rather, the Examiner must point to some
concrete evidence in the record in support of these findings. In re Zurko, 258
F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus the Examiner
must not only assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings are deemed to
support the Examiner’s conclusion. 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
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(Fed. Cir. 1992). If that burden is met, the burden then shifts to the applicant to
overcome the prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1040,
228 USPQ 685, 687 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 146-47 (CCPA 1976).
With respect to appealed independent claims 1, 4, and 7, Appellants’
arguments in response to the obviousness rejection assert a failure by the
Examiner to establish a prima facie case of obviousness since all of the claimed
limitations are not taught or suggested by the applied prior art references. After
reviewing the applied Kawamura, Hoekstra, and Kagawa references in light of
the arguments of record, we are in general agreement with Appellants’ position
as stated in the Briefs.
In particular, we agree with Appellants that, in contrast to the claimed
invention, the Kawamura reference has no disclosure of the immediate
termination of a command transaction transmitted from a controlling device to a
controlled device upon receipt of an interim response from the controlled device.
As described, for example, at pages 103, 104, and 108 of Appellants’
specification, the immediate termination of a command transaction upon receipt
of an interim response from a controlled device enables the controller to
conclude a transaction without waiting for a final response that may occur at a
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later time. This elimination of a final response wait time enables the controller to
formulate a new command for a new target controlled device without having to
wait for a final response from the original target controlled device.
Our review of the disclosure of Kawamura finds no description of any
operation which could reasonably be interpreted as corresponding to the claimed
immediate transaction termination feature. As pointed out by Appellants (Brief,
pages 7-10; Reply Brief, pages 2-9), the receipt of an interim response from a
controlled device in Kawamura triggers the formulation of a “NOTIFY (CANCEL)
COMMAND” (Figure 3, Step ST 6) which then must be transmitted to the
controlled device for processing. As further illustrated in Kawamura’s Figure 3
and described at column 13, lines 8-58 of Kawamura, the command transaction
initiated by the controller device is not terminated (Step ST 4) until the controlled
device processes the “(NOTIFY (CANCEL) COMMAND” and sends back to the
controller device an “ACCEPTED” response (Step ST 7) or a “TIME-OUT” occurs
(Step ST 8).
We further agree with Appellants (Reply Brief, page 6) that, even if it is
assumed that in Nakamura the “NOTIFY (CANCEL) COMMAND” is transmitted
immediately to the controlled device upon receipt of an interim response by the
controller device, there is no immediate termination of the command transaction
sent from the controller device to the controlled device (Step ST 1). As pointed
out by Appellants (id.), Kawamura’s controller device must wait until the
controlled device processes the “NOTIFY (CANCEL) COMMAND” (Figure 4,
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Step ST 19) and sends back to the controller device a formulated “ACCEPTED”
response (Step ST 20) which must then be processed by the controlled device
(Step ST 7) before the command transaction is terminated at Step ST 4.
We have also reviewed the Hoekstra, Kagawa, and Ishiwatari references
added to Kawamura by the Examiner to address, respectively, the claimed
response time periods, transmission error recognition, and power on/off
command transmission features. We find nothing, however, in any of these
references, taken individually or collectively, which would overcome the innate
deficiencies of Kawamura discussed supra.
In view of the above discussion, since we are of the opinion that the
proposed combination of the Kawamura, Hoekstra, Kagawa, and Ishiwatari
references set forth by the Examiner does not support the obviousness rejection,
we do not sustain the rejection of independent claims 1, 4, and 7, nor of claims 2,
3, 5, 6, 8, and 9 dependent thereon.
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In summary, we have not sustained the Examiner’s rejection of any of the
claims on appeal. Therefore, the decision of the Examiner rejecting claims 1-9
under 35 U.S.C. § 103(a) is reversed.
REVERSED

James D. Thomas )
Administrative Patent Judge )
)
)
)
Joseph F. Ruggiero ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Mahshid D. Saadat )
Administrative Patent Judge )

JFR:tdl

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Appeal No. 2006-2452
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C. Irvin McClelland
Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
1940 Duke Street
Alexandria, VA 22314

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