Ex Parte Cases et alDownload PDFPatent Trial and Appeal BoardApr 18, 201311737355 (P.T.A.B. Apr. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MOISES CASES, DANIEL N. de ARAUJO, BHYRAV M. MUTNURY, and NAM H. PHAM ____________ Appeal 2010-011635 Application 11/737,355 Technology Center 2800 ____________ Before ALLEN R. MacDONALD, MIRIAM L. QUINN, and BARBARA A. PARVIS, Administrative Patent Judges. QUINN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1-13 and 16-20. Claims 14 and 15 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b). Appeal 2010-011635 Application 11/737,355 2 STATEMENT OF THE CASE According to Appellants, the invention relates to data processing, or more specifically, methods, apparatus, and products for noise reduction among conductors. Spec., 1, ll. 11-12. 1 The subject matter on appeal involves conductors disposed adjacent to one another, the conductors characterized as two or more aggressor conductors and one or more victim conductors. Spec., Abstract. Details of the appealed subject matter are recited in illustrative independent claim 1, reproduced below from the Claims Appendix of the Appeal Brief: 2 1. A method of noise reduction among conductors, the conductors disposed adjacent to one another, the conductors characterized as two or more aggressor conductors and one or more victim conductors, at least two of the aggressor conductors driven with at least two signals that induce unwanted crosstalk upon at least one of the victim conductors, a programmable delay device disposed in a signal path of each of the at least two signals that induce unwanted crosstalk, the method comprising: programming a delay period into each programmable delay device; receiving, simultaneously at the programmable delay devices, the at least two signals that induce unwanted crosstalk; and transmitting, by drive electronics from the programmable delay devices on two aggressor conductors, the at least two 1 References to Appellants’ Specification (“Spec.”) are directed to the specification filed on April 19, 2007. 2 References to the Appeal Brief (“Br.”) are directed to Appellants’ Appeal Brief filed on March 23, 2010. Appeal 2010-011635 Application 11/737,355 3 signals that induce unwanted crosstalk, with the at least two signals separated in time by the delay period. As evidence of unpatentability of the claimed subject matter, the Examiner relies on the following reference at pages 3 to 4 of the Answer: 3 Yoh US 7,159,160 B2 Jan. 2, 2007 The Examiner provides the following grounds of rejection, of which Appellants seek review: (1) Claims 13 and 16-20 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter (Ans. 3-4 (relying on Office Action mailed Jan. 4, 2010 [hereinafter “OA”]); and (2) Claims 1-13 and 16-20 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Yoh (Id.). ISSUES a) Did the Examiner err in determining that claims 13 and 16-20 are directed to non-statutory subject matter? In particular the issue turns on whether the recited “recordable medium” excludes transitory signals. b) Did the Examiner err in determining that claims 1-13 and 16-20 as being anticipated by Yoh? In particular, the issue turns on whether Yoh teaches “transmitting . . . the at least two signals that induce 3 References to the Examiner’s Answer (“Ans.”) are directed to the Answer mailed on May 21, 2010. Appeal 2010-011635 Application 11/737,355 4 unwanted crosstalk, with the at least two signals separated in time by the delay period.” ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ contentions. Further, we have reviewed the Examiner’s response to Appellants’ arguments. We have been persuaded by Appellants’ arguments and render our decision based on the following discussion. Rejection of Claims 13 and 16-20 over 35 U.S.C. § 101 Independent claim 13 is directed to a computer program product and recites in the preamble that the “computer program product [is] disposed upon a computer readable, recordable medium, the computer program product comprising computer program instructions.” (Emphasis added.) The Examiner maintains a rejection of claim 13 and its dependents on the basis that the “recordable medium” language does not exclude the claims from encompassing impermissible “signal bearing media.” Final Rej. 3; 4 Ans. 5. Appellants take issue with the Examiner’s position because the recited “recordable medium” excludes intangible embodiments. Br. 10. We agree with Appellants. We note that the claims no longer recite that the computer program is disposed on “signal bearing medium.” By amending the claims to replace “signal bearing medium” with “recordable medium,” the claims are no longer drawn to an objectionable broader category that includes transitory signals. Confirming this fact, the Specification states that signal bearing 4 References to the Final Rejection (“Final Rej.”) are directed to the Office Action mailed January, 4, 2010. Appeal 2010-011635 Application 11/737,355 5 media may be transmission media or recordable media. Spec. 12 (emphasis added). That recordable media can be “magnetic disks in hard drives or diskettes, compact disks for optical drives, magnetic tape, and others . . . .” Id. Therefore, by reciting “recordable medium,” we interpret the claims-at- issue in accordance with Appellants’ Specification definition of recordable media and to be limited to non-transitory signals. Accordingly, we do not sustain the Examiner’s rejection of claims 13 and 16-20 under 35 U.S.C. § 101. Rejection of Claims 1-13 and 16-20 Under 35 U.S.C. § 102(e) for Being Anticipated by Yoh Claim 1 recites “transmitting . . . the at least two signals that induce unwanted crosstalk, with the at last two signals separated in time by the delay period.” Claims 7 and 13 recite similar limitations. The Examiner points to Yoh’s disclosure of transmission, at the same time, of a victim and aggressor signals, that are not received at the same time because they are separated by a delay. Final Rej. 4-5; Ans. 5-6. Appellants contend that the Examiner’s finding is in error because the claims require that one aggressor signal is delayed with respect to another aggressor signal, not an aggressor signal delayed with respect to a victim signal, as taught in Yoh. Br. 11-12. We agree with Appellants’ conclusion. Accordingly we do not sustain the Examiner’s rejection of Claims 1- 13 and 16-20 under 35 U.S.C. § 102(e) as being anticipated by Yoh. Appeal 2010-011635 Application 11/737,355 6 New Grounds of Rejection of Claims 1-13 and 16-20 Under 35 U.S.C. § 103 as Being Unpatentable Over Yoh Although we find that Yoh does not disclose “transmitting, by drive electronics from the programmable delay devices on two aggressor conductors, the at least two signals that induce unwanted crosstalk, with the at least two signals separated in time by the delay period,” as discussed above, we nevertheless conclude that the claimed subject matter is obvious over Yoh. First, we make the following findings of fact regarding Yoh. a. Yoh describes that simultaneous switching noise (SSN) is the effect of an aggressor signal line on another, and specifically, a victim signal line, when the two lines carry signals that switch at substantially the same time. Yoh, col. 1, ll. 7-43. b. Yoh teaches that switching the signal of the aggressor signal line at a different time eliminates the noise effect caused by SSN. Yoh, col. 7, ll. 16-29. c. Yoh describes multiple aggressor signal line paths, each with a corresponding delay element. Yoh, fig.5; col. 10, ll. 31-33; col. 10, ll. 47-49. As evidenced by Yoh and the findings of fact discussed above, the general principle – that noise as result of two conductors with simultaneous switching signals is reduced or eliminated by introducing a delay in one of the signals – was known before the Appellants’ invention. To implement this general principle, or genus, we note that there are a limited number of options concerning to which conductor in a pair of conductors should the delay be introduced. This set of options, or species, includes: Appeal 2010-011635 Application 11/737,355 7 (1) Introducing a delay in the aggressor conductor with respect to a victim conductor; (2) Introducing a delay in the aggressor conductor with respect to another aggressor conductor; (3) Introducing a delay in the victim conductor with respect to an aggressor conductor; and (4) Introducing a delay in a victim conductor with respect to another victim conductor. Yoh expressly teaches the application of the general principle to the first and third options. Yoh, col. 4, ll. 14-20 (disclosing delay in the aggressor signal line to prevent the victim and aggressor signals from being received at the same time); and Yoh, col. 4, ll. 21-23 (disclosing delay in the victim line rather than in the aggressor signal line). Yoh also teaches that a person who designs circuit boards (such as when determining bus timing budgets) would be interested in selecting the appropriate noise-reducing delay so that the data transmitted falls under a data valid window. Yoh, col. 1, l. ll.58-59; col. 1 66 – col. 2, l. 3. Therefore, a person of ordinary skill in the art has the knowledge and incentive to increase the data valid window (Yoh, col. 1, ll. 55-57) to reduce as much as possible the noise effectuated by multiple aggressor conductors. See supra, fact (c). Considering all of the above, we determine that a person of ordinary skill in the art would be motivated to apply the delay-introduction technique taught in Yoh to reduce noise in the third option, which involves two adjacent aggressor conductors. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007). Furthermore, “we do Appeal 2010-011635 Application 11/737,355 8 not ignore the modifications that one skilled in the art would make to a device borrowed from the prior art.” In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (citing Optivus Tech., Inc. v. Ion Beam Applications, S.A., 469 F.3d 978, 989-90 (Fed. Cir 2006). Finally, [I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [A] court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions." KSR, 550 U.S. at 417. Furthermore, we find that structurally, there is no difference between the aggressor and victim signal lines in Yoh and the two aggressor conductors recited in Appellants’ claims. Both are conductors and, other than the distinction based on their characterization as “aggressor” versus “conductor,” the result of the application of the known general principle of noise reduction by introduction of delay is the same. See In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (court reaffirming “that structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that prima facie case.”); see also Spec. 4 (Appellants describing that the difference between an “aggressor” and a “victim” is a matter of usage such that “[i]f all conductors are driven with signals that induce crosstalk, in a cable or a bus for example, then all the conductors are both aggressors and Appeal 2010-011635 Application 11/737,355 9 victims.”). As such, on the record before us, we conclude that Appellants’ claimed subject matter is obvious over the teachings in Yoh. We designate this rejection of obviousness over Yoh as a new grounds of rejection using our authority under 37 C.F.R. § 41.50(b). DECISION We REVERSE the Examiner’s decision to reject claims 13 and 16-20 under 35 U.S.C. § 101 and the Examiner’s decision to reject claims under 35 U.S.C. § 102(e). Using our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection of claims 1-13 and 16-20 under 35 U.S.C. § 103(a) as being unpatentable over Yoh. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Appeal 2010-011635 Application 11/737,355 10 No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). REVERSED 37 C.F.R. § 41.50(b) ELD Copy with citationCopy as parenthetical citation