Ex Parte Wolrich et al

Board of Patent Appeals and Interferences

Mar 12, 2009

09473571 (B.P.A.I. Mar. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GILBERT WOLRICH, DEBRA BERNSTEIN,
MATTHEW J. ADILETTA, and WILLIAM WHEELER
____________

Appeal 2008-0479
Application 09/473,5711
Technology Center 2100
____________

Decided: 2 March 12, 2009
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed December 28, 1999. The real party in interest is Intel
Corporation.
2 The two-month time period for 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).
Appeal 2008-0479
Application 09/473,571

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-40 mailed July 13, 2005, which are all the claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellants invented a system, method, and computer readable
medium for controlling parallel processor arrays. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 1-40. Claims 1, 9, 18, 28, and 33 are
independent claims. Claim 1 is illustrative:
1. A processor, comprising:
a module configured to collect status data from media
access devices connected to a bus, the status data indicating readiness
of the media access devices to participate in data transfers, the status
data comprising data indicating whether a one of the media access
devices has received packet data;
one or more processing engines to schedule transfers of
packet data; and
a push engine to perform unsolicited transfers of the
status data to the processing engines in response to the module
collecting new status data.

C. REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Isfeld US 5,592,622 Jan. 7, 1997
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Cotton US 5,623,489 Apr. 22, 1997
Gulledge US 5,644,623 Jul. 1, 1997
Ebrahim US 5,887134 Mar. 23, 1999
Williams US 6,144,669 Nov. 7, 2000
O’Loughlin US 6,275,505 B1 Aug. 14, 2001
Vaidya US 6,279,113 B1 Aug. 21, 2001
Chilton US 6,418,488 B1 Jul. 9, 2002
Witkowski US 6,430,626 B1 Aug. 6, 2002
Adler US 6,552,826 B2 Apr. 22, 2003

D. REJECTIONS
The Examiner entered the following objections/rejections which are
before us for review:
(1) The drawings are objected to under 37 C.F.R. § 1.83(a);
(2) Claims 3, 6-8, 10, 14, 21-23, 31, 39, and 40 are rejected under 35
U.S.C. § 112, second paragraph;
(3) Claims 1-5, 7-11, 13, 14, 16, 17, and 33-40 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Isfeld, Chilton, and Witkowski;
(4) Claim 6 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Isfeld, Chilton, Witkowski, and Williams;
(5) Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Isfeld, Chilton, Witkowski, and Vaidya;
(6) Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Isfeld, Chilton, Vaidya, and Witkowski;
(7) Claims 18, 19, 22, and 26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ebrahim, Gulledge, and Witkowski;
(8) Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ebrahim, Gulledge, Witkowski, and Vaidya;
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(9) Claims 21 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ebrahim, Gulledge, Witkowski, and Isfeld;
(10) Claim 23 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ebrahim, Gulledge, Witkowski, and Cotton;
(11) Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ebrahim, Gulledge, Witkowski, Vaidya, and Cotton;
(12) Claims 28-30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over O’Loughlin, Witkowski, and Isfeld;
(13) Claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Isfeld, Chilton, Witkowski, and Adler.

II. PROSECUTION HISTORY
Appellants appealed from the Final Rejection and filed an Amended
Appeal Brief (App. Br.) on October 10, 2006. The Examiner mailed an
Examiner’s Answer (Ans.) on January 17, 2007. Appellants filed a Reply
Brief (Reply Br.) on March 16, 2007.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Specification
1. The Specification discloses that “[i]n an unsolicited data transfer,
the destination device for the transfer does not request the transfer” (13:20-
22).
2. The Specification discloses that “[t]he transfer of ready status data
from the FBI [FIFO bus interface] 38 to destination processing engines 22a-
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22f and scheduling threads proceeds without any request from the
processing engines 22a-22f” (13: 22-25).

Isfeld
3. Isfeld discloses that “[i]n Fig. 6, IOP4 receives a packet, and sends
it to IOP5. Note that the input card simply sends the message to the output
card. The sender does not need to allocate buffers or get permission from
the receiver” (col. 9, ll. 39-42).

Gulledge
4. Gulledge discloses that “in the case of the FQM system this
data may be automatically transferred through a local area network” (col. 14,
ll. 48-49).

Witkowski
5. Witkowski discloses that “[t]he RX MCB interface 530 asserts
a signal RX_PKT_AVAIL* to the MCB 404 when packet data is in one of
the RX BUFs 520, 522 and ready for transfer to the memory 212” (col. 20,
ll. 46-49).

IV. PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 1740.
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Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). Therefore, we look to Appellants’ Brief to show error in
the proffered prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Brief has not been
considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

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V. ANALYSIS

Drawing Objections
The Examiner found that the drawings are objected to because the
claimed “status data of multiple media access devices is stored in a single
one of the at least one register of the interface” is not shown in the drawings
(Ans. 5).
We respectfully point out that objections to the drawings are not
appealable matters. Requirements made by the Examiner that are not
subject to appeal are petitionable to the Director under 37 C.F.R. §
1.181(a)(1). Accordingly, we have no authority to decide the Examiner’s
objections to the drawings.

§ 112 Rejections
Claims 3, 6-8, 10, 14, 21-23, and 31
The Examiner found that claims 3, 6-8, 10, 14, 21-23, and 31 recite
the limitation “the device” and that there is insufficient antecedent basis for
this limitation in the claim (Ans. 6).
Appellants contend that none of these claims recite the term “device”,
singular, as indicated by the Examiner but rather recite “devices”, plural, and
the antecedent basis is provided by the “media access devices” of claim 1
and 9 (App. Br. 10). We agree with Appellants.
Firstly, it is unclear why the Examiner is focused on a singular term,
i.e., device, that fails to be included in the claims. Secondly, the Federal
Circuit has held that despite the absence of explicit antecedent basis, “If the
scope of a claim would be reasonably ascertainable by those skilled in the
art, then the claim is not indefinite.” Bose Corp. v. JBL, Inc.., 274 F.3d 1354,
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1359 (Fed. Cir. 2001). Moreover, the court has held that antecedent basis
can be present by implication. Slimfold Manufacturing Co., Inc. v. Kinkead
Industries, Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). See, Energizer
Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir.
2006) (discussing these cases with approval).
Here, the recitation in independent claims 1, 9, and 18 for “media
access devices” provides adequate antecedent basis by implication for the
recited “devices,” particularly since no other devices are recited. The
Examiner’s stated concerns regarding two “sets” of devices, one being
“media access devices” and the other being just “devices” (Ans. 34) are
misplaced. We find that the scope of the claimed “devices” could be
reasonably ascertained in this case. Therefore, the Examiner’s rejection for
lack of antecedent basis is REVERSED.

Claim 39
Appellants contend that “the number of media access devices is at
least one, but may be more. Claim 39 specifies that the number of media
access devices is more than one” (App. Br. 10).
The Examiner found that claim 39 could be interpreted as “one media
access device compris[ing] multiple media access devices” (Ans. 6). We
agree with the Examiner.
The USPTO gives pending claims “their broadest reasonable
interpretation consistent with the specification” and “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
This broader claim construction standard is justified because, during
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prosecution, the applicant has the opportunity to amend the claims, and the
Federal Circuit has held that an applicant has the opportunity and the
obligation to define his or her invention precisely during proceedings before
the USPTO. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997) (35
U.S.C. 112, second paragraph places the burden of precise claim drafting on
the applicant); In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (manner of
claim interpretation that is used by courts in litigation is not the manner of
claim interpretation that is applicable during prosecution of a pending
application before the USPTO).
This issue turns on whether the scope of claim 39 is clear to a
hypothetical person possessing the ordinary level of skill in the pertinent art.
Specifically, we are concerned (1) that the “at least one media access device
comprises multiple media access devices” element of claim 39 has more
than one equally plausible claim constructions of differing scope, and
(2) whether the hypothetical person has a sufficient basis upon which to
select one construction over others.
Here, the Examiner has presented a plausible construction (Ans. 6)
and Appellants have also presented a plausible construction (App. Br. 10).
However, because the claimed “at least one media access device comprises
multiple media access devices” element of claim 39 is amenable to at least
two different claim constructions of different scope, we conclude that claim
39 is indefinite under 35 U.S.C. § 112, second paragraph.

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Claim 40
The Examiner found that in Claim 40 “[i]t is unclear as to how the
Applicant wants the status data stored in the register, (i.e., one copy in one
register, multiple copies in one register, one copy in multiple register, etc.)”
(Ans. 6). The Examiner further found that “it is unclear as to what is mean
[sic] by a ‘single one of the at least one register’ . . . only one register or
there is only a single status data stored” (Ans. 36).
Appellants contend that that they “do not understand the Examiner’s
reference to ‘copies’” (App. Br. 11). Appellants further contend that “the
language ‘at least one register’ includes one register or multiple register[s],
and claim 40 merely seeks to delineate the situations in which only one
register is used to store status data of media access.” (Id.) We agree with
Appellants.
As noted supra, the Examiner questions how many copies are placed
into how many registers. However, the term “copies” is not found in claim
40. Claim 40 merely requires that status data of multiple access devices be
stored in a single one of the at least one register of the interface. Thus, we
find the Examiner’s reference to “copies” is misplaced.
Furthermore, the Examiner tries to equate the claimed “single one of”
phrase with both a “register” and with “status data.” We find that claim 40
clearly states “a single one of the at least one register” and does not also
implicate a single status data as alleged by the Examiner. Thus, we cannot
sustain the Examiner’s rejection of claim 40.

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Grouping of Claims under § 103 Rejections
Initially, we note that the Examiner stated in the Answer that
numerous grounds of rejections “are not under review on appeal because
they have not been presented for review in the appellant’s brief” (Ans. 3).
We disagree with this statement. Upon reviewing the record, we find that
Appellants have merely grouped certain claims together rather than argue
them separately. The groupings are as follows:
In the Brief, Appellants argue claims 1-17 and 28-32 as a group (App.
Br. 6-8). For claims 2-17 and 28-32, Appellants repeat the same argument
made for claim 1. We will, therefore, treat claims 2-17 and 28-32 as
standing or falling with independent claim 1.
Appellants argue claims 33-40 as a group (App. Br. 8). For claims
34-40, Appellants repeat the same argument made for independent claim 33.
We will, therefore, treat claims 34-40 as standing or falling with claim 33.
Appellants argue claims 18-27 as a group (App. Br. 8). For claims
19-27, Appellants repeat the same argument made for independent claim 18.
We will, therefore, treat claims 19-27 as standing or falling with claim 18.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

Enablement Rejection
We first consider the Examiner’s discussion concerning lack of
enablement for Appellants’ invention (Ans. 29-30). Particularly, the
Examiner found that “Appellant’s invention is not enabled to have the push
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engine perform an unsolicited transfer for there needs to be a command sent
to said push engine to let it know when to transmit the status information”
(Ans. 29).
Appellants contend that the Examiner’s discussion in the Answer
about lack of enablement is improper because the Examiner has neither
entered a new rejection . . . nor has the Examiner ever rejected claim 1 or
any other claim under 35 U.S.C. 112, first paragraph” (Reply Br. 1).
While we agree with Appellants that the Examiner did not
prominently identify a new ground of rejection in the Answer, yet changed
the basic thrust of the rejection by introducing an enablement issue for the
first time, we find no evidence in the record whereby Appellants requested
that such a designation be made. Particularly, if Appellants believe that the
Examiner’s Answer contained a new ground of rejection not identified as
such, Appellants should have filed a petition under 37 C.F.R. 1.181(a)
within two months from the mailing of the Examiner’s Answer requesting
that this ground of rejection set forth in the answer be designated as a new
ground of rejection. However, any allegation that an examiner’s answer
contains a new ground of rejection not identified as such is waived if not
timely raised (i.e., by filing the petition within two months of the answer) by
way of a petition under 37 C.F.R. 1.181(a).
However, Appellants did file a Reply Brief setting forth arguments to
address the so-called new rejection in the Examiner’s Answer. Therefore,
we will address this issue. We shall treat the Examiner’s discussion of an
enablement problem as an alternative to meeting the claim limitations.
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The Examiner found that “there is no teachings of the push engine, by
itself, performing an unsolicited transfer nor is there any disclosure as to
how the push engine could do an unsolicited transfer” (Ans. 30).
Appellants contend that “the push engine 62 sends status data to the
processing engines in response to commands from the internal logic of FBI
38 (of which the push engine is apart of), but not in response to any
command, request or signal from the processing engines 22a-f (e.g., the
recipients of the status data)” (Reply Br. 2).
In essence the Examiner has not given any patentable weight to the
claimed “unsolicited transfer” because the Examiner believes that such a
feature is not enabled by Appellants’ Specification. We disagree with the
Examiner.
The “enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) (citation omitted). Whether undue experimentation is
required is a conclusion reached by weighing several underlying factual
inquiries. In re Wands, 858 F.2d 731, 736 (Fed. Cir. 1988). A
“specification need not disclose what is well known in the art.” Lindemann
Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452,
1463 (Fed. Cir. 1984). However, this “is merely a rule of supplementation,
not a substitute for a basic enabling disclosure.” Genentech, Inc. v. Novo
Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997). It means that the

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omission of minor details does not cause a specification to fail to meet the
enablement requirement. Id. It is the specification, not the knowledge of
one skilled in the art, that must supply the novel aspects of an invention in
order to constitute adequate enablement. Id.
In the present case, Appellants’ Specification defines an “unsolicited
data transfer” as a transfer where the destination device does not request the
transfer (FF 1). Appellants’ Specification goes on the state that the FBI 38,
which includes a push engine (see Appellants’ Fig. 2), transfer ready status
data to destination processing engines without any request from the
processing engines (FF 2). Thus, we find that Appellants’ Specification
clearly requires that an unsolicited data transfer includes of a FBI with a
push engine providing ready status data to a destination device that does not
provide a request for such data.
Therefore, we find that the aforementioned portions of the
Specification provide sufficient basis for Appellants’ interpretation of the
manner of making an unsolicited data transfer as recited in independent
claim 1. Given such interpretation, we conclude that an artisan, having read
the Specification, would have reasonably been able to practice the claimed
invention without undue experimentation.
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).

Claims 1-17 and 28-32
The Examiner found that Isfeld’s transfer of data using a command
“flush” is substantially similar to the transfer command that is received at
the push engine (Ans. 31).
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Appellants contend that “Isfeld does not describe that OIP4 would
push/perform [an] unsolicited transfer of MAC status data to OIP5, nor does
the Examiner posit a motivation why one skill in the art would modify the
OIPs to push MAC status data about [sic] receiving packet data to other
IOPs” (App. Br. 6). Appellants further contend that “[n]or do[es] either
Chilton or Wilkowski in any way describe or suggest pushing/performing an
unsolicited transfer of such data” (Id.). We agree.
As noted supra, in the claimed invention a request is not being
received from the destination device during the unsolicited data transfer.
The transfer command that the Examiner cites from Appellants’
Specification does not come from the destination device, but from another
device, i.e., from within the FBI unit itself. Thus, we find no inconsistencies
in Appellants’ Specification as suggested by the Examiner. Furthermore, the
Examiner has not shown and we do not readily find where Isfeld, Chilton
and Witkowski (i.e., the only argued references) disclose unsolicited
transfers in response to collecting new status data when a destination device
does not request the transfer.
Isfeld merely discloses transferring packets from an input card to an
output card without prior permission from a receiver (FF 3). However, the
claimed invention requires unsolicited transfers of status data to processing
engines in response to collecting new status data, and the Examiner has not
established how this claimed feature reads on the transfer of packets in
Isfeld. Instead, the Examiner merely refers to column 27 of Isfeld (Ans. 31)
which discloses that “[b]uffers and status are moved into the rcv and hrcv
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list buffers (RLB and HLB) by the flush to ibus function” (col. 27, ll. 63-64).
However, Isfeld’s movement of status information appears to be in response
to a flush to ibus function not from receiving new status information.
Thus, Appellants have shown that the Examiner erred in finding that
the combination of cited references disclose that above noted disputed
limitation. Therefore, we reverse the rejection of independent claim 1 and of
claims 2-8, 9-17, and 28-32, which stand therewith under 35 U.S.C. § 103.

Claims 18-27
Appellants contend that the references do not provide or imply a
motivation to “modify a cellular handset quality measuring scheme to collect
historical statistics about MACs ‘to ready the packet for processing and/or
transmission to other devices in the system’” (App. Br. 9-10).
The Examiner’s articulated motivation on page 33 of the Answer
includes being able to assign a relative transmit priority to each port when
packet data is available for transmission (Ans. 33).
We begin by noting that the reasoning given as support for the
conclusion of obviousness can be based on “interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art.” KSR, 127 S. Ct. at 1740-41.
We note our reviewing court has recently reaffirmed that:
[A]n implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
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enhance commercial opportunities by improving a product or process
is universal-and even common-sensical-we have held that there exists
in these situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves. In such
situations, the proper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining
the prior art references.

Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2007). See also Leapfrog Enters., Inc. v. Fisher-Price Inc., 485
F.3d 1157, 1162 (holding it “obvious to combine the Bevan device with the
SSR to update it using modern electronic components in order to gain the
commonly understood benefits of such adaptation, such as decreased size,
increased reliability, simplified operation, and reduced cost.”)
The Examiner found that Ebrahim discloses each of the claimed
features but for an interface connected to collect ready status data and to
automatically transfer ready status data (Ans. 14). As such, the Examiner
relies upon Gulledge to teach an interface connected to the bus to collect
data (Ans. 14) and further relies upon Witkowski to teach ready status data
(Ans. 15). Thus, the Examiner has found actual teachings in the prior art
and has provided a rationale for the combination (Ans. 33). In essence,
Appellants do not dispute the actual teachings found but merely attack the
rationale for making the combination/modification (App. Br. 8-10).
Therefore, we adopt the Examiner’s findings and limit our discussion to
whether the Examiner has articulated a reasonable rationale for making the
combination.
We find that such teachings found by the Examiner reasonably
suggest that the combination involves the predictable use of prior art
elements according to their established functions. For example, the
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Examiner has shown that Gulledge discloses automatically transferring data
(FF 4) and that Witkowski discloses asserting a signal indicating that packet
data has been received (FF 5). Further the Examiner has indicated that it
would have been obvious to combine the references because it would be
faster if the status was automatically transfer once the data was collected”
(Ans. 14). Such a conclusion of obviousness, which is based on interrelated
teachings of multiple patents, is appropriate. Accordingly, we find that the
Examiner has provided sufficient motivation for combining the teachings of
the references, and we will therefore sustain the obviousness rejection of
claims 18-27.

Claims 33-40
Appellants contend that “Claim 33 recites ‘multiple multi-threaded
engines’. . . . the Examiner has not identified any aspect of the references
providing this limitation.” (App.Br. 8).
The Examiner found that Appellants failed to comply with
37 C.F.R. 1.111(b) and “multiple multi-threaded engines” could be nothing
more than processors (Ans. 31-32). We agree with the Examiner.
Although it appears that the Examiner did not provide a precise
indication of where “multiple multi-threaded engines” were found in the
cited references, we find that Appellants merely argue that the Examiner has
not identified the above-noted limitations without providing any meaningful
analysis that explains why the claimed matter is distinguishable over the
applied art. A statement which merely points out what a claim recites will
not be considered an argument for separate patentability of the claim. See
37 C.F.R. § 41.37(c)(1)(vii). "It is not the function of [the U.S. Court of
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Appeals for the Federal Circuit] to examine the claims in greater detail than
argued by an appellant, looking for nonobvious distinctions over the prior
art." In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991).
Similarly, it is not the function of this Board to examine claims in greater
detail than argued by an appellant, looking for distinctions over the prior art.
We note that arguments which Appellants could have made but chose not to
make in the original Brief have not been considered and are deemed to be
waived.
Therefore, we do not find that Appellants have shown error in the
Examiner’s rejection of illustrative claim 33. Therefore, we affirm the
rejection of independent claim 33 and of claims 34-40, which fall therewith.

VI. CONCLUSIONS
We conclude the following:
(1) The Drawing Objections are not appealable;
(2) Appellants have shown that the Examiner erred in rejecting
claims 3, 6-8, 10, 14, 21-23, 31, and 40 under 35 U.S.C. § 112, 2nd
paragraph;
(3) Appellants have not shown that the Examiner erred in rejecting
claim 39 under 35 U.S.C. § 112, 2nd paragraph;
(4) Appellants have shown that the Examiner erred in rejecting
claims 1-17 and 28-32 under 35 U.S.C. § 103(a);
(5) Appellants have not shown that the Examiner erred in rejecting
claims 18-27 and 33-40 under 35 U.S.C. § 103(a); and
(6) Appellants have shown that the Examiner erred in applying a new
enablement rejection under 35 U.S.C. § 112.
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VII. DECISION
In view of the foregoing discussion,
(1) We reverse the Examiner’s rejection of claims 3, 6-8, 10, 14,
21-23, 31, and 40 under 35 U.S.C. § 112, 2nd paragraph;
(2) We affirm the Examiner’s rejection of claim 39 under 35
U.S.C. § 112, 2nd paragraph;
(3) We affirm the Examiner’s rejection of claims 18-27 and 33-40
under 35 U.S.C. § 103(a);
(4) We reverse the Examiner’s rejection of claims 1-17 and 28-32
under 35 U.S.C. § 103(a); and
(5) We reverse the Examiner’s new rejection of the claims under 35
U.S.C. § 112 for lack of enablement.
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)(iv) (2007).

AFFIRMED-IN-PART

pgc

FISH & RICHARDSON, PC
P.O. BOX 1022
MINNEAPOLIS MN 55440-1022
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