Ex Parte Simon et al

Board of Patent Appeals and Interferences

Aug 10, 2011

09792502 (B.P.A.I. Aug. 10, 2011)

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.
09/792,502 02/23/2001 Thomas D. Simon ITL.1463C1US (P10492C) 9573
21906 7590 08/11/2011
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
HA, DAC V
ART UNIT PAPER NUMBER
2611
MAIL DATE DELIVERY MODE
08/11/2011 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 THOMAS D. SIMON, RAJEEVAN AMIRTHARAJAH,
NANDU J. MARKETKAR, THOMAS F. KNIGHT, JR.,
and JOHN R. BENHAM
____________

Appeal 2009-010973
Application 09/792,502
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-30, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed Jan. 24, 2007), the Answer
Appeal 2009-010973
Application 09/792,502

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(Supplemental, mailed Nov. 27, 2007), and the Reply Brief (filed July 30,
2007) for the respective details.
1
We have considered in this decision only
those arguments Appellants actually raised in the Briefs. Any other
arguments which Appellants could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellants‟ invention relates to an apparatus for transferring data
through an electromagnetic coupler. Balanced electromagnetic couplers are
utilized to provide reliable signal transfer between a communications
channel and the coupled devices without significantly impacting the
impedance of the communications channel. See generally Spec. 7:7-17.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. An apparatus comprising:
a transmitter to encode plural bits into selected properties of a symbol;
a trace including an electromagnetic coupling element having a shape,
size, and distance from a bus to enable a substantially reliable signal transfer
between the electromagnetic coupling element and the bus without
significantly changing the impedance of the bus.

The Examiner’s Rejections
The Examiner‟s Answer cites the following prior art references:
Williamson US 6,016,086 Jan. 18, 2000
Perino US 6,496,889 B1 Dec. 17, 2002
(filed Aug. 16, 1999)

1
The November 27, 2007 Answer is identical to the May 30, 2007 Answer
except for the inclusion of the missing reference citation at page 3.
Appeal 2009-010973
Application 09/792,502

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Claims 1-30, all of the appealed claims, stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Williamson in view of Perino.

PRINCIPLES OF LAW
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). Furthermore,
“„there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness‟ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

Appeal 2009-010973
Application 09/792,502

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ANALYSIS
Claims 1-4, 6-10, and 24
Appellants‟ arguments with respect to the obviousness rejection of
independent claims 1 and 24 focus on the contention that, in contrast to the
claimed requirement of an electromagnetic coupling element which enables
signal transfer “without significantly changing the impedance of the bus,”
Williamson actually changes the impedance of the bus transmission lines 34
and 36. According to Appellants (App. Br. 12-13), Williamson introduces
impedance discontinuities to the transmission lines 34 and 36 and relies on
impedance mismatching to invert resulting waves to generate common mode
reflections which are canceled at receiver 14.
We do not agree with Appellants. We find that Appellants‟ arguments
have mischaracterized the disclosure of Williamson as we do not interpret
Williamson‟s disclosure as introducing or relying on impedance
mismatching. Instead, it is Williamson‟s use of open and short circuits 30
and 42 in the coupling elements 22 and 24 that cause reflections from
existing impedance discontinuities such as connectors 38 and 40 to be re-
reflected in common mode so that they are rejected at differential receiver
14 (Fig. 2; col. 4, l. 53-col. 5, l. 4). Accordingly, we agree with the
Examiner‟s ultimate determination (Ans. 4-5) that a signal propagating
through the bus transmission lines 34 and 36 in Williamson will arrive at
receiver 14 without experiencing any significant changes in bus impedance
since reflections caused by impedance discontinuities will be canceled out at
the receiver 14.
Appeal 2009-010973
Application 09/792,502

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We further agree with the Examiner, Appellants‟ arguments (App. Br.
13; Reply Br. 2) to the contrary notwithstanding, that the claimed
requirement that the coupling element have a “shape, size, and distance from
a bus” (claim 1) or a “geometry” (claim 24) to enable reliable signal transfer
is satisfied by the disclosure of Williamson. As explained by the Examiner
(Ans. 5), there is no particular geometry, shape, size, or distance for the
coupling recited in claims 1 and 24. We agree with the Examiner that the
coupling elements 22 and 24 of Williamson have a geometry, size, shape
and distance from a bus and, as discussed supra, reliable signal transfer is
provided without significantly changing bus impedance because of the
canceling out of common mode reflections (col. 5, ll. 3-10).
Lastly, contrary to Appellants‟ contentions (App. Br. 13-14), we find
that the Examiner‟s stated position (Ans. 7) provides a valid articulated line
of reasoning with a rational underpinning to support the legal conclusion of
obviousness for the proposed combination of Williamson and Perino. See
KSR, 550 U.S. at 418. We agree with the Examiner‟s finding that Perino‟s
teaching of the increased reliability provided by the encoding of signal
source bits into symbols (col. 13, l. 65- col. 15, l.30) would be recognized by
the artisan as an obvious enhancement to the signal interconnect system of
Williamson.
For the above reasons, we sustain the Examiner‟s 35 U.S.C. § 103(a)
rejection of independent claims 1 and 24, as well as the rejection of
dependent claims 2-4 and 6-10 not separately argued by Appellants.

Appeal 2009-010973
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Claim 5
We do not sustain the Examiner‟s obviousness rejection of separately
argued dependent claim 5 which requires a termination device responsive to
a calibration signal received by the claimed apparatus. Although the
Examiner suggests (Ans. 8) that an ordinarily skilled artisan would have
recognized that calibration would have been desirable in Williamson‟s
impedance termination device, no evidence has been provided to support
such a conclusion. Further, the Examiner‟s rationale (id.) that the inclusion
of a calibration circuit is “design specific and obvious to one skilled in the
art” does not provide an articulated line of reasoning with a rational
underpinning to support the conclusion of obviousness. See KSR, 550 U.S.
at 418.

Claims 11-17 and 25-30
We also do not sustain the Examiner‟s obviousness rejection of
independent claim 11 and dependent claims 12-17 and 25-30. In addressing
the language of claim 11 which requires a flexible material and a conductor
mounted on the flexible material, the Examiner merely asserts (Ans. 9) that a
bus and couplers are conductive devices that are generally made of metal
and that “[m]etal itself is „flexible material.‟”
As argued by Appellants (App. Br. 14-15; Reply Br. 2-3), however,
the Examiner has ignored the precise language of claim 11 which requires a
separate flexible material on which a conductor is mounted, not that the
conductor or bus or coupler be a flexible material. Similarly, dependent
claim 25, upon which claims 26-30 depend, requires a substrate which
includes a flexible portion upon which the coupling element is mounted.
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Application 09/792,502

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Claims 18-23
The Examiner‟s obviousness rejection of independent claim 18, and
its dependent claims 19-23, is also not sustained. We agree with Appellants
(App. Br. 15-16; Reply Br. 3) that the Examiner has again ignored the
specific language of claim 18 which is directed to a memory module that
includes a clamp for securing the memory module to a system to which a
portion of symbol energy is transferred. While the Examiner‟s stated
position (Ans. 9) refers to the rationale used to reject claim 1, claim 1 has no
recitation of a “clamp,” nor do the cited references to Williamson or Perino
ever mention a memory clamp.

CONCLUSION
Based on the analysis above, we conclude that Appellants have not
shown that the Examiner erred in rejecting claims 1-4, 6-10, and 24, but
have shown that the Examiner erred in rejecting claims 5, 11-23, and 25-30.

DECISION
The Examiner‟s decision rejecting claims 1-30 under 35 U.S.C.
§ 103(a) is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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