Ex Parte Patek et al

Board of Patent Appeals and Interferences

Dec 15, 2010

10033328 (B.P.A.I. Dec. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DARRIN M. PATEK, SHAUN CLEM, TODD L. KHACHERIAN,
JIMMY PU, and CHRIS REED

____________________

Appeal 2009-006218
Application 10/033,328
Technology Center 2400
____________________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

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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Application 10/033,328

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I. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) on November 23, 2010, for
reconsideration of the Decision mailed September 23, 2010 (hereinafter
“Decision”) with respect to claims 22-24 (Request 1).
The Decision affirmed the Examiner’s rejections of claims 1-7, 14,
16, 18, 21, and 25 under 35 U.S.C. § 102(b) and of claims 8-13, 15, 17, 19,
20, and 22-24 under 35 U.S.C. § 103(a). The Request only addresses the
affirmance of the rejection of claims 22-24 under 35 U.S.C. § 103(a) over
Chin in view of Nolan, and thus, the affirmance of the other rejections is not
the subject of this Request (Request 1-6).
We have reconsidered the panel’s Decision of September 23, 2010
regarding claims 22-24 under 35 U.S.C. § 103(a) over Chin in view of
Nolan, in light of Appellants’ comments in the Request, and we find
Appellants have not identified any points misapprehended or overlooked by
the Board in the Decision to affirm the rejection of claims 22-24 under 35
U.S.C. § 103(a). We decline to change the Decision for the reasons
discussed infra.

II. ISSUE
The issue we address on this Request is whether Appellants have
identified any points misapprehended or overlooked by the Board in holding
claims 22-24 unpatentable.

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appeal Brief
1. As to claims 22-24, in the Appeal Brief, Appellants merely contended
that “China and Nolan nowhere teach or suggest the ‘first crossbar
switch’, the ‘second crossbar switch’, nor a ‘control unit for selecting
said plurality of selected output ports using a multicast data structure
having predetermined multicast routes’” (App. Br. 11).
Examiner’s Answer
2. In the Examiner’s Answer, the Examiner found that Chin “discloses a
first crossbar switch for transferring a frame from an input port to
shared memory (receive circuitry of the switch ports)…, a second
crossbar switch for transferring said frame to a plurality of selected
output ports (processing and forwarding circuitry)…, and a control
unit for selecting said plurality of selected output ports using a
multicast data structure having predetermined multicast routes (the
portion of the switching fabric circuit that maintains and uses the
forwarding table to make routing decisions)” (Ans. 7). In particular,
the Examiner concluded that “the claimed ‘first crossbar switch’
corresponds to Chin’s receive circuitry of the switch ports,” “the
‘second crossbar switch’ corresponds to the ‘processing and
forwarding’ circuitry,” and “the claimed control unit corresponds to
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portion of the switch fabric circuit that maintains and uses the
forwarding table to make routing decisions” (Ans. 13).
Reply Brief
3. In the Reply Brief, the Appellants merely repeated the language of
claim 22 (Reply Br. 3-4), reproduced the language of claims 8 and 22
in a side-by-side chart for comparison (Reply Br. 4), and added the
argument that “a crossbar switch is a well-known switching element
having multiple inputs and multiple outputs and an array of switches
for routing signals or data from each of the inputs to each of the
outputs” (Reply. Br. 5). Appellants also added that “Chin’s
description does not provide an enabling disclosure of any particular
embodiment of the switching fabric” (id.).

IV. ANALYSIS
In the Request, Appellants contend that “the Board apparently
interpreted [Appellants’] arguments in the Reply Brief as only that the
reference fail[s] to teach or suggest the ‘first cross bar switch’, ‘the second
crossbar switch’ and ‘the control unit’” (Request 2, emphasis added).
Appellants then add a newly presented argument that the Appellants were
“attempting to argue that the Examiner had failed to make a prima face[sic]
case of obviousness and, in particular, had failed to identify where the
elements of the claim (which encompass much more than simply two
crossbar switches and a control unit) could be in the prior art” (id.).
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As set forth in 37 CFR § 41.37(c)(1)(vii)(2004), any argument “not
included in the brief or a reply brief filed pursuant to § 41.41 will be refused
consideration by the Board.” Accordingly, we refuse to consider
Appellants’ newly presented argument that “the elements of the claim …
encompass much more than simply two crossbar switches and a control unit”
(Request 2).
In appealing the Final Rejection in the Appeal Brief, Appellants
merely contended that “Chin and Nolan nowhere teach or suggest the ‘first
crossbar switch’, the ‘second crossbar switch’, nor a ‘control unit for
selecting said plurality of selected output ports using a multicast data
structure having predetermined multicast routes’” (FF 1). Appellants,
however, provided no explanation as to how or why the “first crossbar
switch,” the “second crossbar switch” and the “control unit” are different
from the circuitry of Chin in view of Nolan. Instead, Appellants merely
summarized Chin and Nolan and simply quoted the claim language (id.),
which we found to be a mere general allegation of patentability that did not
specify, as required, how the quoted language patentably distinguishes the
claimed invention. This form of argument in the Appeal Brief is wholly
ineffective in demonstrating error in the Examiner’s prima facie case to
establish the patentability of the claims on appeal. Ex parte Belinne, Appeal
No. 2009-004693, decided Aug. 10, 2009, (BPAI) (informative). Available
at: www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
As set forth in the Examiner’s Answer, the Examiner found that “the
claimed ‘first crossbar switch’ corresponds to Chin’s receive circuitry of the
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switch ports,” “the ‘second crossbar switch’ corresponds to the ‘processing
and forwarding’ circuitry,” and “the claimed control unit corresponds to
portion of the switch fabric circuit that maintains and uses the forwarding
table to make routing decisions” (FF 2).
Appellants added additional arguments in the Reply Brief in an
attempt to cure the noted deficiencies in the Appeal Brief (FF 3). However,
these arguments were new arguments raised for the first time in the Reply
Brief. Because Appellants’ arguments could have been raised in the Appeal
Brief but Appellants failed to do so, we deemed the arguments technically
waived.
In our Decision, we gave the claims their broadest reasonable
interpretation and interpreted a “crossbar switch” to be a switching element
(Decision 9). Accordingly, we found that “[o]ne of ordinary skill in the art
would have understood Chin in view of Nolan to suggest a switching fabric
circuit that includes an element for transferring data packet from an input
port, an element for transferring the frame to selected output ports, and a
control unit for selected the output ports” (id.)
Though Appellants contend that the Board misinterpreted Appellants’
arguments in the Reply Brief (id.), as set forth in our Decision, we addressed
Appellants’ arguments as set forth in the Appeal Brief, and not the Reply
Brief (Decision 8). That is, since it is inappropriate for Appellants to discuss
for the first time in the Reply Brief matters that could have been raised in the
Appeal Brief, we addressed arguments that Appellants set forth in the
Appeal Brief. As the Board has recently found, “[t]he failure to raise all
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issues and arguments diligently, in a timely fashion, has consequences,” and
thus, such newly-raised arguments are technically waived. Ex parte Borden,
93 USPQ2d 1473, 1475 (BPAI 2010) (informative decision) (“[The reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not.”). Cf. Kaufman Company v. Lantech, Inc., 807 F.2d 970, 973 n.* (Fed.
Cir. 1986) and McBride v. Merrell Dow and Pharms., Inc., 800 F.2d 1208,
1211 (D.C. Cir. 1986).
Although such newly-raised arguments presented in the Reply Brief
are technically waived, we also note that the arguments are unpersuasive.
That is, though Appellants contend that “a crossbar switch is a well-known
switching element having multiple inputs and multiple outputs and an array
of switches for routing signals or data from each of the inputs to each of the
outputs” and that “Chin’s description does not provide an enabling
disclosure of any particular embodiment of the switching fabric” (Reply. Br.
5), such arguments are not commensurate in scope with the language of
claim 22. That is, claim 22 does not recite any such “multiple inputs and
multiple outputs and an array of switches” or any such “enabling
disclosure.” Accordingly, even if we do not technically waive the arguments
presented in the Reply Brief, such arguments do not persuade us to reverse
the Examiner’s rejection of claims 22-24 over Chin in view of Nolan.
Accordingly, Appellants’ Request does not persuade us of any points
we misapprehended or overlooked in the Decision. Moreover, Appellants’
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Request does not persuade us to reverse the Examiner’s rejection of claims
22-24 over Chin in view of Nolan.

V. CONCLUSION
We have carefully considered the arguments raised by Appellants in
the Request for Rehearing but find no points misapprehended or overlooked
by the Board in the original Decision, and none of these arguments are
persuasive that the original Decision was in error. We are still of the view
that the invention set forth in claims 22-24 are unpatentable over the applied
prior art based on the record before us in the original appeal. This Decision
on Appellants’ Request for Rehearing is deemed to incorporate the earlier
Decision (mailed September 23, 2010) by reference. See 37 C.F.R. §
41.52(a)(1).

VI. DECISION
We have granted Appellants’ request to the extent that we have
reconsidered the Decision of September 23, 2010, but we deny the request
with respect to making any changes therein.

REHEARING DENIED

peb
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