Ex Parte Sallaway et al

Board of Patent Appeals and Interferences

Oct 17, 2007

09751037 (B.P.A.I. Oct. 17, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER J. SALLAWAY, DOUGLAS EASTON,
and MATT WEBB
____________

Appeal 2007-1807
Application 09/751,037
Technology Center 2600
____________

Decided: October 17, 2007
____________

Before MAHSHID D. SAADAT, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1 through 38. We have jurisdiction under 35 U.S.C.
§ 6(b) to decide this appeal. We reverse.

Appeal 2007-1807
Application 09/751,037

The Invention
Appellants invented a controller having an encoding portion and a
decoding portion for monitoring and controlling the operating modes in a
network transceiver. (Specification 3.)
An understanding of the invention can be derived from exemplary
independent claim 1, which reads as follows:
1. For use with a network transceiver having a decoder and an
encoder, a controller that controls operating modes of the network
transceiver, comprising:

an encoder portion operable to direct said encoder to encode data in
one of an industry-compliant mode and a custom mode; and

a decoder portion operable, in response to sensing data received in
said custom mode at said decoder, to direct:

said decoder to decode said received data in said custom mode;
and

said encoder portion to direct said encoder to encode data in
said custom mode.

In rejecting the claims on appeal, the Examiner relies upon the
following prior art:
Herve US 5,740,163 Apr. 14, 1998
Agazzi US 6,721,916 B2 Apr. 13, 2004
(Filed May 15, 2001)

The Examiner rejects the claims on appeal as follows:
A. Claims 1 through 7, 9 through 16, 18 through 24, and 26 through 37
stand rejected under 35 U.S.C. § 102(b) as being anticipated by Herve.
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Application 09/751,037

B. Claims 8, 17, 25, and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Herve and Agazzi.
Appellants contend that Herve does not anticipate the invention as
recited in claims 1 through 7, 9 through 16, 18 through 24, and 26 through
37. Particularly, Appellants contend that Herve does not teach or suggest a
decoder portion that directs an encoder portion to direct an encoder to
encode data in a custom mode in response to a decoder sensing data received
in the custom mode, as recited in independent claims 1, 9, 18, and 26. (Br.7,
Reply Br. 2.) For these same reasons, Appellants contend that the
combination of Herve and Agazzi does not render claims 8, 17, 25, and 38
unpatentable. In response, the Examiner contends that Herve’s disclosure of
a management system that uses a switch to inform a CODEC of the selected
mode of operation of a visiophone teaches the claim limitation. (Answer 12-
15.)
ISSUE
The pivotal issue in the appeal before us is as follows:
Have Appellants shown that the Examiner failed to establish that the
disclosure of Herve anticipates the claimed invention under 35 U.S.C.
§ 102(b)? Particularly, does Herve’s disclosure anticipate the claimed
invention given that Herve teaches a management system to instruct a
CODEC via a switch of the selected mode of operation of a
visiophone?
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence.
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Application 09/751,037

The Invention
1. As depicted in Figure 1, Appellants invented a network transceiver
(100) operable in either an industry-compliant mode or in a custom
mode. The transceiver (100) includes an encoder (120), a decoder
(125) and a mode controller (130) to control the operating modes of
the transceiver. (Specification 11-12.)
2. The controller (130) comprises an encoder portion (135) and a
decoder portion (140). The encoder portion (135) being able to direct
the encoder (120) to encode received data in either the industry
compliant mode or the custom mode. (Id. 13.)
3. When the detector senses received data to be in a custom mode, the
decoder portion (1) directs the encoder portion to direct the encoder to
encode the data in custom mode, and (2) directs the decoder to decode
the received custom data. (Id.)
The Prior Art Relied Upon
4. As depicted in Figure 1, Herve teaches a dual-mode ISDN/STN
visiophone terminal including an audio section (7) and a video section
(1). Each of the videophone sections is connected to a respective
CODEC segment (13, 24, 6, and 25) to encode or decode received
data according to the ISDN or STN mode of operation that the
management system (18) selected via a switch (28). (Col. 3, ll. 19-65;
col. 4, ll. 12-23.)
ANALYSIS
We begin our analysis by noting that independent claims 1, 9, 18 and
26 require a controller comprising an encoder portion and a decoder portion
wherein the decoder portion directs the encoder portion to direct an encoder
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Application 09/751,037

to encode data in a custom mode in response to the decoder sensing received
data to be in the custom mode. (Br. Claims Appendix.) After carefully
considering the evidence before us, we find that Herve’s disclosure does not
reasonably teach this limitation. Particularly, we find insufficient evidence
in the record before us to support the Examiner’s conclusion of anticipation.
As detailed in the Findings of Fact section above, we have found that
Herve teaches a CODEC for encoding/decoding audio or video data in the
ISDN or STN mode as selected by the management system via the switch.
(Finding 4.) We do not agree with the Examiner that Herve’s management
system comprises an encoder portion and a decoder portion. Albeit the
management system communicates with the encoder and decoder sections of
the CODEC via other intervening devices, it cannot be reasonably construed
to include the cited portions, as required by the above claims. Further, even
assuming that Herve’s management system does include the
encoder/decoder portions, Herve’s disclosure would still fall short of
teaching the above limitation. Particularly, we note that in Herve, the
management system selects a desired ISDN or STN mode of operation via
the switch and subsequently instructs the CODEC to decode and encode the
incoming data via the multiplexer/demultiplexer. We fail to find any
teaching in Herve of a decoder that senses or detects the mode of operation
of the visiophone for the decoder portion to subsequently instruct the
encoder portion to encode the incoming data.
It follows that the Examiner erred in rejecting independent claims 1,
9, 18, and 26 as being anticipated by Herve. Therefore, we reverse the
Examiner’s rejection of independent claims 1, 9, 18, and 26 and associated
dependent claims 2 through 7, 10 through 16, 19 through 24, and 27 through
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37, as being anticipated by Herve. Because we have reversed the Examiner’s
rejection of each independent claim on appeal, we also reverse the
Examiner’s rejection of dependent claims 8, 17, 25, and 38 as being
unpatentable over the combination of Herve and Agazzi under 35 U.S.C.
§ 103.
CONCLUSION OF LAW
On the record before us, the Examiner has failed to establish that
Herve’s disclosure anticipates claims 1 through 7, 9 through 16, 18 through
24, and 26 through 37 under 35 U.S.C. § 102(b). Further, the Examiner has
failed to establish that Herve’s disclosure renders claims 8, 17, 25, and 38
unpatentable under 35 U.S.C. § 103(a).
DECISION
We have reversed the Examiner’s decision rejecting claims 1 through
38.
REVERSED

tdl/ce

DOCKET CLERK
P.O. DRAWER 800889
Dallas TX 75380

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