Ex Parte Carlson

Patent Trial and Appeal Board

Nov 26, 2012

09882100 (P.T.A.B. Nov. 26, 2012)

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.
09/882,100 06/15/2001 Arthur J. Carlson 3875.0010001 7713
26111 7590 11/26/2012
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
BOCURE, TESFALDET
ART UNIT PAPER NUMBER
2634
MAIL DATE DELIVERY MODE
11/26/2012 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 PATENT TRIAL AND APPEAL BOARD

____________

Ex parte ARTHUR J. CARLSON

Appeal 2011-007440
Application 09/882,1001
Technology Center 2600
____________

Before JEAN R. HOMERE, JAMES R. HUGHES, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Filed June 15, 2001. Broadcom Corporation is the real party in interest.
(App. Br. 1.)
Appeal 2011-007440
Application 09/882,100

2
STATEMENT OF THE CASE
In a paper filed September 28, 2012, Appellant requests a rehearing
under 37 C.F.R. §41.52 from the Opinion of the Board of Patent Appeals
and Interferences (now the Patent Trial and Appeal Board, hereinafter the
“Board”) dated July 30, 2012. In the Opinion, we affirmed the Examiner’s
rejection of claims 1-22. Appellant alleges that the Board erred by
misapprehending or overlooking the arguments presented in the Brief.

We summarize Appellant’s principal allegations of error as follows:
(1) Appellant argues we erred by finding in a “numerical hypothetical
example” that the penultimate limitation of claim 1, that is, “a
multiple of a predetermined number of bits” could very well be
numerically equal to the final limitation of claim 1, that is, “any
integer number of bits.” (Req. Reh’g. 4);
(2) Appellant urges that our finding above ignores the arguments
presented in the Appeal that Hardy fails to disclose the formation
of symbols constituting “a varying number of bits depending on
the data rate.” (Id. at 4-5.); and,
(3) Appellant argues that our finding ignores the fact that Figure 4 of
Appellant’s Specification describes two separate steps, at reference
numerals 405 and 407. (Id. at 6-7.)

Consequently, Appellant requests a rehearing of the Board’s Decision
affirming the rejection of claims 1-22. (Id. at 7.)

Appeal 2011-007440
Application 09/882,100

3
We have carefully reviewed the Opinion in light of Appellant’s
allegation of errors. We will address those remarks in the order in which
they are presented in the Request and as outlined above.
First, Appellant argues that we erred by selecting a “numerical
hypothetical example” in our equating of the limitations “a multiple of a
predetermined number of bits” and “any integer number of bits.” However,
Appellant admits that these separate steps “may coincidentally converge to
the same number.” (Req. Reh’g. 5.) Consequently, in light of Appellants’
admission, we find no error in our “numerical hypothetical example.”
Despite acknowledging that our “numerical hypothetical example” is
correct, Appellant argues that our finding does not acknowledge the
arguments with regard to whether the Hardy reference “disclosed the
formation of symbols constituting a varying number of bits depending on the
data rate.” (Id.)
In support of the position that the present invention forms symbols
utilizing a varying number of bits, Appellant urges us to consider Figure 4 of
the present Specification, which discloses two separate steps, at reference
numerals 405 and 407.
We note that “[T]he PTO gives claims their ‘broadest reasonable
interpretation.’” In re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations
are not to be read into the claims from the specification.” In re Van Geuns,
988 F.2d 1181, 1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989)).
Appeal 2011-007440
Application 09/882,100

4
Here, Appellant’s argument is not commensurate with the limitations
of representative claim 1, or claims 2-22 which were not argued separately.
Appellant argues limitations not recited in the claims. The claims do not
recite the “formation of symbols constituting a varying number of bits
depending on the data rate.” (Req. Reh’g. 5.) We decline to read the argued
limitations into the claims from the Specification.
We find, as we did in our original Opinion, that Appellant’s claims
fail to expressly recite that “a multiple of a predetermined number of bits” is
different from “any integer number of bits” and Appellant’s arguments to the
contrary are not commensurate with the scope of the appealed claims.
We also find, as we did in our original opinion, that Hardy, the
reference relied upon by the Examiner, teaches transmitting data utilizing
either a character mode or a packet mode, dependent upon the data rate, and
we find that the characters or symbols in Hardy presumably contain an
identical number of bits during each form of transmission.
We are therefore satisfied that all arguments timely submitted by the
Appellant in the Briefs were adequately addressed in the original Opinion.
We have consequently found that Appellant has not shown that the Board
erred by misapprehending or overlooking those identified arguments
previously raised in the Briefs. Therefore, we maintain our position as set
forth in the original Opinion that Appellant has not shown error in the
Examiner’s rejections of claims 1-22.

Appeal 2011-007440
Application 09/882,100

5

CONCLUSION
In view of the foregoing discussion, we decline to modify our decision
of Appeal. Consequently, we deny Appellant’s Request for Rehearing.

REQUEST FOR REHEARING DENIED

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