Ex Parte Yeh et al

Patent Trial and Appeal Board

Dec 5, 2014

12335599 (P.T.A.B. Dec. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HSIN-CHUNG and CHENG HUANG WU
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Appeal 2012-009852
Application 12/335,599
Technology Center 2100
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Before ALLEN R MacDONALD, STANLEY M. WEINBERG, and
J. JOHN LEE, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009852
Application 12/335,599

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–19. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. An electronic apparatus, comprising:
a random access memory (RAM) for storing a call transfer
table, the call transfer table comprising at least one transferred address
in the RAM;
a read-only memory (ROM), for storing at least one code to
call one address of the call transfer table; and
a processing unit, for executing the code in the ROM and
reading the call transfer table accordingly, then transferring to run the
data in the transferred address of the RAM.

Rejections on Appeal
The Examiner rejected claims 1–3, 6, 8–11, 14, and 17 under
35 U.S.C. § 102(b) as being anticipated by Parthasarathy (US 2003/0217227
A1).1
The Examiner rejected claims 4, 5, 7, 12, 13, 15, 16, 18, and 19 under
35 U.S.C. § 103(a) as being unpatentable over various combinations of
Parthasarathy with other references.2

1 Separate patentability is not argued for claims 2, 3, 6, 9–11, and 14.
Except for our ultimate decision, claims 2, 3, 6, 9–11, and 14 are not
discussed further herein.
2 Separate patentability is not argued for claims 4, 5, 7, 12, 13, 15, 16, 18,
and 19. Rather, the rejection of these claims turns on our decision as to the
disclosures of Parthasarathy, and is not further addressed herein.
Appeal 2012-009852
Application 12/335,599

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The Examiner rejected claims 10 and 14 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Applicants regard as the
invention. 3

Appellants’ Contention
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(b) as being anticipated by Parthasarathy because
Parthasarathy does not teach “executing the code in the ROM and reading
the call transfer table accordingly,” “executing a ROM code to run data in an
address of the call transfer table,” or “executing at least one NVM code in
the ROM identified with one of the table indices,” as required by
independent claims 1, 8, and 17 respectively. (App. Br. 5–12).

Issues on Appeal
Did the Examiner err in rejecting claims 1, 8, and 17 as being
anticipated under 35 U.S.C. § 102(b) because Parthasarathy fails to describe
the argued limitations?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
As to Appellants’ above recited contention, we agree. Particularly,
we agree that Parthasarathy “does not teach any of utilizing the instructions

3 Appellants do not appeal this rejection. (App. Br. 4 (“Applicant is not
appealing these rejections.”)). Therefore, we affirm pro forma. Except for
our ultimate decision, this rejection is not discussed further herein.
Appeal 2012-009852
Application 12/335,599

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in the ROM to call and run a code in the RAM using a call transfer table.”
(App. Br. 7).

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1–3, 6, 8–11, 14, and 17 as being anticipated by Parthasarathy under
35 U.S.C. § 102(b).
(2) Appellants have established that the Examiner erred in rejecting
claims 4, 5, 7, 12, 13, 15, 16, 18, and 19 as being unpatentable under
35 U.S.C. § 103(a).
(3) The Examiner did not err in rejecting claim 10 and 14 as being
indefinite under 35 U.S.C. § 112, second paragraph.
(4) On this record, claims 1–9, 11–13, and 15–19 have not been
shown to be unpatentable.
(5) Claims 10 and 14 are not patentable.

DECISION
The Examiner’s rejection of claims 1–3, 6, 8–11, 14, and 17 as being
anticipated under 35 U.S.C. § 102(b) is reversed.
The Examiner’s rejections of claims 4, 5, 7, 12, 13, 15, 16, 18, and 19
as being unpatentable under 35 U.S.C. § 103(a) are reversed.
The Examiner’s rejection of claims 10 and 14 as being indefinite
under 35 U.S.C. § 112, second paragraph, is affirmed.
Appeal 2012-009852
Application 12/335,599

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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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