11529357 - (D) (P.T.A.B. Apr. 30, 2014)

Ex Parte Pong

Patent Trials and Appeals BoardApr 30, 2014

11529357 - (D) (P.T.A.B. Apr. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/529,357 09/29/2006 Fong Pong 1875.9040001 8328 49579 7590 04/30/2014 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER ELMS, RICHARD T ART UNIT PAPER NUMBER 2824 MAIL DATE DELIVERY MODE 04/30/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FONG PONG ____________ Appeal 2011-010751 Application 11/529,357 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and JAMES C. HOUSEL, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of our Decision of February 26, 2014, wherein the Examiner’s decision to reject the appealed claims under 35 U.S.C. § 102(b) was affirmed. In accordance with Appellant’s Request, we have reconsidered our Decision in light of the Request, but we find no reason to modify our Decision. Appeal 2011-010751 Application 11/529,357 2 Appellant contends in the Request (Req.) that the Board misapprehended or overlooked precedent and relevant guidance in evaluating the significance of functional claim language (Req. 2-4). However, there is no controlling precedent identified in the Appeal Brief and/or Reply Brief (or new precedent identified in the Request) that we misapprehended and/or overlooked in considering the timely presented arguments set forth in the Briefs in rendering our Decision. As we indicated in the Decision (Dec. 4): Appellant focuses the argument on the recited controller configuration functionality and contests the Examiner’s anticipation rejection over Hartsell on the basis that Hartsell does not explicitly describe that the relied upon local controller structure thereof performs the specific messaging protocol/functionality expressed in the claim 1 recitation “in response to receiving a signal from a remote SOC, the local controller is configured to retrieve a message from a remote on- chip memory of the remote SOC and store the message in the local on-chip memory” (App. Br. 5-12; Reply Br.1-6). In other words, the functional language that is argued here is directed to a claim limitation that encompasses a controller that has the functionality/capability of acquiring a controller configuration (being programmed) to retrieve a message from a remote SOC and to locally store the message “in response to receiving a signal from a remote SOC” and is not limited to a pre-configured controller for retrieving such a message and storing it locally. Contrary to the contentions in the Request, the Board properly considered Appellant’s argument respecting the limitation in question which encompasses the functional capability of acquiring a controller configuration Appeal 2011-010751 Application 11/529,357 3 upon receipt of a signal in the Decision rendered. The Board determined that (Dec. 5): the Examiner appears to have reasonably found that the relied upon controller structure of Hartsell, which structure Appellant seemingly acknowledges as being capable of receiving a message (signal), would be reasonably expected to possess the further capability of following any instruction/programming received via such a received message/signal including an instruction to retrieve a remotely stored message and locally store the message. For the reasons noted above and in our Decision, the Request does not identify any substantive error in the Examiner’s anticipation determination identified by argument presented in a timely manner in the Appeal Brief that the Board misapprehended or overlooked in rendering its Decision. ORDER Appellant’s request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making any change therein. DENIED tc