Ex Parte Shin et al

Board of Patent Appeals and Interferences

Feb 25, 2009

10045625 (B.P.A.I. Feb. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YESHIK SHIN, DAVID D. LEE, and DEOG-KYOON JEONG
____________

Appeal 2008-5290
Application 10/045,625
Technology Center 2600
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Decided1: February 25, 2009
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Before JOSEPH F. RUGGIERO, MARC S. HOFF, and ELENI MANTIS-
MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

1 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).

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-24, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appellants’ claimed invention relates to a method and device for
transmitting synchronization symbols which indicate a type of packet that is
to be transmitted after the synchronization symbol (Spec. ¶ [0094], Figure
9A).
Claim 1 is illustrative of the invention and reads as follows:
1. A method for transmitting packet types of packets, the method
comprising:
receiving a packet having symbols;
identifying a packet type of the packet;
transmitting a synchronization symbol that corresponds to the
identified packet type, wherein the transmitted
synchronization symbol provides synchronization
information and wherein each packet type has a different
synchronization symbol; and
transmitting the symbols of the received packet.

The Examiner relies on the following prior art references to show
unpatentability:
Burnett US 5,703,875 Dec. 30, 1997
Deb US 6,172,990 B1 Jan. 9, 2001
(filed Nov. 12, 1997)
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Application 10/045,625

Claims 9-15 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Burnett.
Claims 1-8 and 16-24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Burnett in view of Deb.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief and Answer for the respective details. 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 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. § 102(b), does Burnett have a disclosure
which anticipates the invention set forth in claims 9-15?

The pivotal issue before us in making this determination is whether
Appellants have demonstrated that the Examiner erred in determining that
Burnett discloses the use of synchronization symbols which indicate the type
of message packet to be transmitted.
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claims 1-8
and 16-24, would one of ordinary skill in the art at the time of
the invention have found it obvious to combine Burnett with
Deb to render the claimed invention unpatentable?

The pivotal issue before us is in making this determination is whether
Appellants have demonstrated that the Examiner erred in determining that
the combination of Burnett and Deb provides a teaching or suggestion of
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Application 10/045,625

using synchronization symbols to indicate the type of message packet that is
being transmitted.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Appellants have invented a method and device for transmitting
synchronization symbols that include an indication of the type of message
packet to be transmitted after the synchronization symbol. A
communication node periodically transmits synchronization primitives to
enable a receiving node to properly align with the synchronization
primitives. Upon receipt of the synchronization primitive, the
communication node will know that the primitive is correctly aligned on a
symbol boundary. (Spec. ¶¶ [0094]-[0096], Figure 9A).
2. Burnett discloses (col. 2, ll. 39-47) a method for identifying the
types of transmitted message packets, such as control messages or data
messages, by using “state control words” when, for example, a first switch is
about to send a message to a second switch.
3. The “state control word” described by Burnett (col. 2, ll. 47-49,
Figure 2) indicates to the receiving second switch into which of the buffers
(control message buffer 12 or data message buffer 13) the received message
is to be stored.
4. Burnett further discloses (col. 3, ll. 18-21) that the “state control
words” can be used to signal the start and end of a message.
5. Deb discloses (col. 21, l. 30 through col. 22, l. 19) a system
which is directed to the identifying of a type of received packet and a
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transmitted appended index associated with the packet before transmission
of the packet.

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190
F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

2. OBVIOUSNESS
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
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obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there 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., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
35 U.S.C. § 102(b) REJECTION

Appellants’ arguments in response to the Examiner’s anticipation
rejection, based on Burnett, of independent claim 9 assert that the Examiner
has not shown how each of the claimed features is present in the disclosure
of Burnett so as to establish a prima facie case of anticipation. Appellants’
arguments (App. Br. 5-6) focus on the contention that, in contrast to the
requirements of appealed independent claim 9, Burnett does not disclose the
use of any synchronization symbols which correspond to or indicate
message packet types.
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We agree with Appellants. We do note that the Examiner has
correctly determined that the “state control words” in Burnett are used to
indicate message packet types, such as control messages or data messages,
as do Appellants’ synchronization symbols. We simply do not find,
however, any support in the disclosure of Burnett for the Examiner’s finding
that Burnett’s “state control words” correspond to the claimed
synchronization symbols since there is no indication that such “state control
words” in Burnett are used for synchronization of any kind.
As explained and defined by Appellants (Spec. ¶ [0094]), the claimed
synchronization symbols permit a receiving node to properly align with the
synchronization primitive so that the synchronization primitive, which is
made up of a sequence of bit-string synchronization symbols (Spec. ¶ ¶
[0097-0099] and Tables 3-4), is correctly aligned on a symbol boundary.
The “state control words” in Burnett, however, as pointed out by Appellants
(App. Br. 6), are primarily used to indicate whether a transmitted message is
a control message or data message and to instruct a switch as to which buffer
transmitted packets are to be stored (col. 2, ll. 39-49 and col. 3, ll. 18-35).
We recognize that the Examiner, in the responsive arguments portion
of the Answer at page 6, further explains the reasoning behind the stated
rejection by calling attention to the fact that the type of synchronization
performed by the Appellants’ claimed synchronization symbols are not set
forth in claim 9. While this is correct, the simple fact remains that the
disclosure of Burnett provides no indication, nor has the Examiner provided
any valid line of reasoning, to support the contention that any coordination
of events that would indicate synchronization of any kind is being performed
by the “state control words” in Burnett.
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In view of the above discussion, in order for us to sustain the
Examiner’s rejection, we would need to resort to impermissible speculation
or unfounded assumptions or rationales to supply deficiencies in the factual
basis of the rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). Accordingly, since Appellants’ arguments have demonstrated that
the Examiner erred in determining that all of the claim limitations are not
present in the disclosure of Burnett, we do not sustain the Examiner’s 35
U.S.C. § 102(b) rejection of appealed independent claim 9, nor of claims 14-
15 dependent thereon.

35 U.S.C. § 103(a) REJECTION
The Examiner’s obviousness rejection of independent claims 1 and
16, and their respective dependent claims 2-8 and 16-24, based on the
combination of Burnett and Deb is also not sustained. Independent claims
24 and 32 also include the feature set forth in previously discussed
independent claim 9 requiring a synchronization symbol that indicates
message packet type, but with the further qualifying limitation that packet
type identification is based on a received packet.
In addressing the claimed limitations, the Examiner has applied, to
Burnett, the teachings of the Deb reference, which is directed (col. 21, l. 30
through col. 22, l. 19) to identifying a type of received packet and a
transmitted appended index associated with the packet before transmitting
the packet. We find nothing, however, in the disclosure of Deb which
overcomes the basic deficiency of Burnett in disclosing the use of a
synchronization symbol for identifying the types of transmitted message
packets as presently claimed.
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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have shown that the Examiner erred in rejecting claims 9-15 for
anticipation under 35 U.S.C. § 102(b), and in rejecting claims 1-8 and 16-24
for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 9-15 under 35 U.S.C.
§ 102(b) and claims 1-8 and 16-24 under 35 U.S.C. § 103(a) is reversed.

REVERSED

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