Ex Parte Wachel

Board of Patent Appeals and Interferences

Apr 28, 2009

09737999 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT D. WACHEL
____________

Appeal 2008-5842
Application 09/737,999
Technology Center 2600
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Decided1: April 28, 2009
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134 from the final Rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 The two-month period of filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic delivery).
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Appellant’s claimed invention relates to providing digital subscriber
line (DSL) service and plain old telephone service (POTS), where the
signals are split internally to a chassis and routed to separate card slots on
separate connectors (Spec. 1:7-9; 4:13-20).
Claim 1 is illustrative of the invention and reads as follows:

1. A method of providing a digital subscriber line service and a
plain old telephone service comprising:

connecting a communication I/O line to a chassis;

providing the digital subscriber line service onto the
communication I/O line using a first circuit board in the
chassis;

providing the plain old telephone service on the communication
I/O line using a second circuit board in the chassis; and

splitting the digital subscriber line service from the plain old
telephone service via a third circuit board on the chassis having
passive components, said splitting occurring within the chassis
without requiring a splitter external to the chassis at a customer
premises.

(App. Br. 13, Claims Appendix).

The Examiner relies on the following prior art references to show
unpatentability:
De Bruycker 6,272,219 B1 Aug. 7, 2001
Williamson 6,477,249 B1 Nov. 5, 2002
Alaimo 6,614,811 B1 Sep. 2, 2003

Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over De Bruycker, Alaimo, and Williamson.

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Appellant argues that claims 1-13 were improperly rejected because
the combination of references fails to teach or suggest splitting DSL service
from POTS via a circuit board, where the splitting occurs within a chassis
without requiring a splitter external to the chassis on a customer’s premises
(Br. 6-9). Appellant also argues that claims 14-16 were improperly rejected
because the combination of references fails to teach or suggest providing
separated DSL signals to a first hot-swappable circuit board and providing
separated SLIC signals to a second hot-swappable circuit board, and there is
no motivation provided in the references to combine them (Br. 9-10). The
Examiner finds the cited references disclose all of the elements of the claims
and the motivation to combine the references supplied in the rejection is
proper (Ans. 8-9).
Appellant argues claims 1-13 together and claims 14-16 together. We
therefore select claim 1 as representative of claims 1-13, and claim 14 as
representative of claims 14-16. 37 C.F.R. § 41.37(c)(1)(vii).
Rather than reiterate all of the arguments of Appellant and the
Examiner, reference is made to the Brief and the Answer for the respective
details. Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
(i) Under 35 U.S.C. § 103(a), with respect to appealed claim 1, would
one of ordinary skill in the art at the time of the invention have found it
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obvious to combine De Bruycker, Alaimo, and Williamson to teach or
suggest all of the elements of that claim?
(i) Under 35 U.S.C. § 103(a), with respect to appealed claim 14,
would one of ordinary skill in the art at the time of the invention have found
it obvious to combine De Bruycker, Alaimo, and Williamson to teach or
suggest all of the elements of that claim?

FINDINGS OF FACT
1. The Specification discloses a system for providing DSL service
and POTS. The system includes a chassis having transition and main cards
coupled through a midplane. The transition cards are further connected to
the network I/O (Spec. 4:1-20; Fig. 3, elements 100, 102, 104a-n, 106a-n,
108, 110).
2. Per claim 1, the splitting of the signals occurs within the chassis
without requiring a splitter external to the chassis.
3. Per claim 14, the splitting of singles occurs in one or more
transition cards having primarily passive components and signals are
provided to separate hot-swappable circuit board.
4. De Bruycker discloses a method of providing DSL service and
POTS through a chassis by splitting the combined signals through a splitter
and providing the signals to communication lines, where the splitter may be
a separate connector module. (Abstract; Col. 4, ll. 5-20 and 45-67; Figs. 5
and 6, elements 40, 60).
5. Alaimo discloses the use of a modular, multi-service
telecommunications access device having separate peripheral cars that may
be inserted into a chassis and connected via a backplane, where the cards
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used may be hot-swappable (Abstract; Col. 1, ll. 44-63, col. 2, ll. 22-30, col.
3, ll. 45-62; col. 4, ll. 30-45; Figs. 2 and 3).
6. Williamson discloses a communications signal splitter for use with
ADSL and POTS traffic that is implemented with passive components
(Abstract; Col. 3, ll.15-25).

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).
[T]here 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)).
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359,
1369 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
“Even when guidance is not provided in explicit definitional format, the
specification may define claim terms by implication such that the meaning
may be found in or ascertained by a reading of the patent documents.”
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Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (citations and
internal quotation marks omitted).

ANALYSIS
Appellant argues that claim 1 was improperly rejected because the
combination of references fails to teach or suggest splitting DSL service
from POTS via a circuit board, where the splitting occurs within a chassis
without requiring a splitter external to the chassis at a customer premises
(Br. 6-9). The Examiner finds the cited references disclose all of the
elements of the claims (Ans. 8-9). We do not find Appellant’s arguments to
be compelling.
Appellant’s arguments are largely conclusory, and provide little in the
way of specifics. Appellant argues that De Bruycker does not specify using
circuit boards, (Br. 8), but Alaimo discloses circuit boards, and we take no
issue with the Examiner’s finding that a circuit board is any device used to
mount, support and connect the circuit components used for each peripheral
card (Ans. 8-9). Appellant argues that Alaimo provides no teaching or
suggestion of peripheral cards operating as a splitter, (Br. 8), but both De
Bruycker and Williamson teach splitters (FF 4, 6), and providing the
splitting operations on separate cards, per Alaimo, is one of the tenets of the
rejection. We find no impediment to combine the teachings. Appellant
acknowledges that Williamson discloses a splitter but seems to argue some
element is not taught by Williamson, but no specifics are found in the Brief.
All of the elements of claim 1 are taught or suggested by De Bruycker,
Alaimo, and Williamson, and Appellant has proffered no reason to not
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combine the teachings. As such, given the arguments presented by
Appellant, we can find no error in the rejection of claim 1.
Appellant also argues that claim 14 was improperly rejected because
the combination of references fails to teach or suggest providing separated
DSL signals to a first hot-swappable circuit board and providing separated
SLIC signals to a second hot-swappable circuit board, and there is no
motivation provided in the references to combine (Br. 9-10). The Examiner
finds the cited references disclose all of the elements of the claims and
asserts that the motivation to combine the references supplied in the
rejection is proper (Ans. 8-9). We do not find Appellant’s arguments to be
compelling.
With respect to claim 14, Appellant reiterates the arguments raised
against the rejection of claim 1, which we have not found to be compelling
supra. In addition, Appellant argues that the combination of De Bruycker,
Alaimo, and Williamson fails to teach or suggest providing the separated
signals to separate hot-swappable circuit boards. Given that Alaimo
discloses that the circuit boards can be hot-swappable, (FF 5), and we have
concurred with the Examiner’s finding that the signals may be distributed to
separate cards supra, we cannot agree with Appellant’s argument.
Additionally, Appellant argues that the combination of De Bruycker,
Alaimo, and Williamson is not motivated by any disclosure contained in
those references and that only impermissible hindsight would guide the
combination (Br. 10). Specifically, Appellant argues that there is no
suggestion to implement one of the peripheral cards of Alaimo as a splitter.
We note that this the same argument raised above, and we find it no more
compelling when raised against motivations to combine the references. We
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agree with the Examiner, (Ans. 9), that the motivations cited in the rejection
are sufficient and proper, and they do not improperly rely on impermissible
hindsight. Appellant has failed to proffer any rationale for why the
references could not have been combined and we can find no error in the
rejection of claim 14.

CONCLUSION
The decision of the Examiner rejecting claims 1-16 under 35 U.S.C.
§ 103(a) as being unpatentable over De Bruycker, Alaimo, and Williamson
is affirmed.

DECISION
The Examiner’s rejection of claims 1-16 before us on appeal is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ack

cc:

CHARLES K. YOUNG
BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN LLP
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