Ex Parte Pihet

Board of Patent Appeals and Interferences

Aug 29, 2012

10694592 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/694,592 10/27/2003 Eric Pihet WMP-IFT-808 3500
27346 7590 08/29/2012
LERNER GREENBERG STEMER LLP
FOR INFINEON TECHNOLOGIES AG
P.O. BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
PATEL, KAMINI B
ART UNIT PAPER NUMBER
2114
MAIL DATE DELIVERY MODE
08/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC PIHET
____________________

Appeal 2011-006130
Application 10/694,592
Technology Center 2100
____________________

Before KEVIN F. TURNER, STEPHEN C. SIU, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/694,592

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
12-28 and 30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant states that the invention relates to a method for checking for
line faults in a bus system, and to a bus system. (Spec. 1, ll. 6-7.)
Claim 12, reproduced below, is illustrative of the claimed subject
matter:
12. A method for checking for line faults in a bus system
having at least two bus subscribers connected to a data bus for
data communication between the subscribers, the data bus
having at least two bus lines, which comprises:
configuring the bus subscribers with switches for placing
the subscribers in a recessive state and a dominant state;
making available an internal high potential and an
internal low potential in the bus subscribers;
carrying out a check for a line fault by a bus subscriber
only when the bus subscriber is placed in the dominant state by
the switches; and
carrying out a check for line faults by comparing voltage
levels on the bus lines with threshold values related to one of an
internal high level and an internal low level of the bus
subscriber.
(Appeal Brief, Claims Appendix1 15.)

THE REJECTIONS
I. The Examiner rejected claims 12-22, 25-28, and 30 under
35 U.S.C. § 103(a) as unpatentable over Eisele et al. (US

1 Appeal Brief filed September 21, 2010, hereinafter “App. Br.” and Claims
App’x, respectively.
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6,034,995, issued March 7, 2000) in view of Williamson (US
5,124,990, issued June 23, 1992). (Examiner’s Answer, dated
November 23, 2010, “Ans.” 3-15.)

II. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Eisele and Williamson in view of Barclay et
al. (US 4,516,248, issued May 7, 1985). (Ans. 15-16.)

III. The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as
unpatentable over Eisele and Williamson in view of Baker (US
6,535,028 B1, issued March 18, 2003). (Ans. 16-17.)

ISSUE
Initially, we observe that Appellant’s arguments against each of the
independent claims subject to Rejection I raise the same or similar issues.
(App. Br. 11-12.) As such, our analysis of Rejection I will focus on
representative claim 12 pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Because
Appellant makes similar arguments with respect to Rejection II (claim 23)
and Rejection III (claim 24) (App. Br. 12-13), our analysis of Rejection I
applies similarly to Rejections II and III.
The dispositive issue on appeal is:
Whether the Examiner erred in concluding that Eisele in view of
Williamson renders claim 12 obvious, including the limitation “carrying out
a check for a line fault by a bus subscriber only when the bus subscriber is
placed in the dominant state by the switches”?

DISCUSSION
The Examiner found that Eisele discloses the method recited in claim
12, except that Eisele does not specifically disclose carrying out a check for
a line fault only when a bus subscriber is placed in a dominant state. (Ans.
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3-5.) The Examiner found that Williamson discloses checking for line faults
only when a bus subscriber is placed in a dominant state because Williamson
teaches fault detection means that sense when a transmission line is short-
circuited in the dominant state. (Ans. 5.) The Examiner concluded that it
would have been obvious to one of ordinary skill in the art at the time of
invention to incorporate Williamson’s diagnostic method with Eisele’s
method to provide fault tolerant network communications. (Ans. 5.)
Appellant argues that one of ordinary skill in the art would not have
combined the teachings of Williamson with the teachings of Eisele because
Williamson is directed to a system having a serial data bus, while Eisele is
directed to a system with a parallel data bus. (App. Br. 9-11.) Appellant
argues that there are differences in topology, protocols, and general
operation between serial and parallel data networks, such that ordinarily
skilled artisans would not have considered the teachings of the one design in
crafting a system in the other design. (App. Br. 10-11.)
We are not persuaded by Appellant’s arguments. Eisele generally
discloses the claimed method for checking for line faults in a parallel data
bus. (Col. 5, ll. 57-64; Col. 6, ll. 15-21, 28-51; Figs. 1-2.) Williamson
discloses carrying out a check for a line fault by a bus subscriber only when
the bus subscriber is placed in the dominant state in a serial data bus. (Col.
5, ll. 1-9.)
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court explained, “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability.” Id. at 417. “[I]f a
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technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” Id. at 417. While we concur with Appellant that
serial and parallel buses are different, Appellant has not provided a
convincing showing that methodologies employed in one would not be
applicable in the other.
Here, Appellant has simply applied a specific limitation on checking
line faults, known to be applicable to serial data buses, to a known general
method for checking line faults in a parallel data bus. There is no persuasive
evidence on record that would indicate that one of ordinary skill in the art
would not be capable of limiting Eisele’s method to conduct fault line
checks only in the dominant state, as done by the serial data bus fault
detection system of Williamson.
Appellant also argues that even if one were to consider the teachings
of Williamson in view of Eisele, Williamson teaches the testing of a
bidirectional portion of the bus between nodes of its ring network, and the
parallel data bus of Eisele does not have such discrete portions. (App. Br.
10-11.) However, we agree with the Examiner (Ans. 19) that if Appellant
seeks to show that applying a feature from Williamson to Eisele would not
work, Appellant has the burden to show that it would not work. Again,
while acknowledging differences in bus topology and signaling, applying a
fault checking method from one type of bus to the other would have been
obvious. Attorney “argument . . . cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974); see also In re Geisler, 116
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F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments or conclusory
statements are insufficient to rebut a prima facie case).
Accordingly, we agree with the Examiner that it would have been
obvious to the one of ordinary skill in the art at the time of invention to
incorporate Williamson’s diagnostic method into Eisele’s method in order to
provide fault tolerant network communications.

DECISION
We affirm the Examiner’s rejections.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED

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