Ex Parte Ban et al

Board of Patent Appeals and Interferences

Sep 22, 2010

11306780 (B.P.A.I. Sep. 22, 2010)

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.
11/306,780 01/11/2006 Oliver K. Ban FIS920040318US1 1779
29505 7590 09/23/2010
LAW OFFICE OF DELIO & PETERSON, LLC.
121 WHITNEY AVENUE
NEW HAVEN, CT 06510
EXAMINER
CERULLO, JEREMY S
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
09/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte OLIVER K. BAN, WILLIAM BORNSTEIN, and
ANTHONY C. SPIELBERG
____________

Appeal 2009-009969
Application 11/306,780
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009969
Application 11/306,780

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I. STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-20. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

A. INVENTION
The invention at issue on appeal relates to:

an apparatus and method for providing data communication and
power between discrete electronic devices and a central
electronic device and, in particular, to a multi-function bus that
contains a variety of functional wiring channels accessed along
its length by connections that permit any of the supported
functions to be exercised.

(Spec. 1.)

The above and other objects, which will be apparent to those
skilled in art, are achieved in the present invention which is
directed to an apparatus for connecting electronic devices
comprising a bus housing containing a plurality of same or
different communication or power channels extending along a
length thereof and at least one bus port at a location along the
bus housing length. Preferably there is a plurality of bus ports at
different locations along the bus housing length. Each bus port
is capable of being operatively connected to one of the
communication or power channels. The apparatus further
includes a plurality of device connectors adapted to connect to a
bus port at one end thereof and to a discrete device at another
end thereof. Each connector at the device end has a different
plug conforming to one of the communication or power
channels. The apparatus preferably further includes a switch for
connecting each bus port to the communication or power
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channel conforming to the device end plug when a device
connector is connected to the bus port on the bus housing.

(Spec. 3.).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. An apparatus for connecting electronic devices comprising:

a bus housing containing a plurality of same or different
communication or power channels extending along a length thereof;

at least one bus port at a location along the bus housing length away
from an end thereof, the at least one bus port capable of being operatively
connected to one of the communication or power channels;

a plurality of device connectors adapted to connect to a bus port at one
end thereof and to a discrete device at another end thereof, each
connector at the port end having a common configuration to connect to
the bus port and at the device end having a different plug conforming to
one of the communication or power channels; and

a switch at the at least one bus port for connecting the at least one bus
port to the communication or power channel conforming to the device
end plug when a device connector is connected to the bus port on the bus
housing.

C. REFERENCES
The Examiner relies on the following references as evidence:
Henrie 6,170,062 Jan. 2, 2001

Milan 6,716,047 Apr. 6, 2004

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D. REJECTIONS

Claims 1, 3-15, and 17-20 are rejected under 35 U.S.C. 102(b) as
being anticipated by U.S. Patent No. 6,170,062 ("Henrie").

Claims 2 and 16 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Henrie as applied to claims 1,3-15, and 17-20 above, and
further in view of U.S. Patent No. 6,716,047 ("Milan").

II. ISSUES
Has the Examiner erred in the rejection of independent claims 1 and
18? Does Henrie teach “switch at the at least one bus port (along the bus
housing)”? Has the Examiner erred in the rejection of independent claim 6?
Does Henrie teach different plugs?

III. PRINCIPLES OF LAW
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986), overruled on other grounds by Knorr-Bremse Systeme Fuer
Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed.Cir. 2004).
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Obviousness requires that all limitations be taught or suggested by the
reference or references. 35 U.S.C. § 103(a).

IV. ANALYSIS

Appellants have elected to group independent claims 1, 6, and 18
together as a single group. (App. Br. 7). We select independent claim 6 as
the representative claim for the grouping, and we will address Appellants'
arguments with respect to claim 6. Appellants have not set forth separate
arguments for the patentability of the dependent claims, and they will fall
with independent claim 6.
Claim 6
Appellants argue at page 7 of the Brief that the "device connectors"
are "separate and different claimed structures from their ‘bus housing’" both
of Henrie's items 12 and 18 that the Examiner likens to the opposite ends of
the claimed device connectors are part of the same item 5 that the Examiner
likens to the claimed "bus housing."
From our review of the teachings of Henrie, we find that Henrie also
teaches an alternative embodiment in figures 9(a) at 9(b). While we do not
rely upon this alternative embodiment, we do rely upon the teachings therein
to evidence the inherency of a USB computer 68 having a plurality of USB
ports 1 and 2 which would be used with the USB adapter as shown in figure
1(b) "TO COMPUTER PORT." Therefore, we find that the computer
housing with plural USB receiver ports would be a separate and discrete bus
housing containing a plurality of same or different communication or power
channels extending along a length thereof. Thus, we do not find Appellants'
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argument persuasive of error in the Examiner's finding of anticipation based
on Henrie. Additionally, we note that Henrie teaches in figure 1(b) daisy
chains USB adapters 6 and 7 wherein the connector on the input end of
adapter 6 and the connector on the output end adapter 7 may be interpreted
as the housings are separate and different.
With respect to Appellants' arguments concerning "different types of
plugs" (Reply Br. 1-2), we agree with the Examiner's interpretation that the
claimed "different plugs" may be broadly yet reasonably interpreted to be
different physical plug connectors and not different types of plugs as argued
by Appellants since Appellants have not expressly set forth different "types"
of connectors in the language of independent claim 6. Therefore,
Appellants' argument is not commensurate in scope with the language of
independent claim 6 and is not persuasive of error regarding the Examiner's
showing of anticipation. Thus, we will affirm the rejection of independent
claim 6 and dependent claims 8 -15 and 17 which have not been argued
separately.
Claims 1, 7, and 18
Appellants additionally set forth arguments with respect to a separate
grouping of independent claims 1 and 18 and dependent claim 7 with respect
to the "switch." (App. Br. 8; Reply Br. 2). Appellants argue that the switch
is located at the bus port (located along the bus housing length) and the
teachings of Henrie do not disclose a switch for connecting the bus port to a
different one of the communication or power channels. (Id.). We agree with
Appellants. We find the Examiner's statement of rejection and responsive
arguments gloss over the "switch" and its interrelationship with the other
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limitations. Therefore, we cannot sustain the rejection of independent
claims 1 and 18 and their respective dependent claim 7.

Claim 16
With respect to dependent claim 16, Appellants’ argument is not
commensurate with the express language of dependent 16 since claim 16
merely adds the flexible cable limitation. (App. Br. 9; Reply Br 2-3).
Appellants’ argument does not identify any specific error in the Examiner’s
proffered combination of teachings or statement of motivation. We further
note that Henrie also teaches the use of a flexible USB cable as in interface
to the USB repeater in figure 9(b) as a means to distribute electrical
connections. Therefore, Appellants have not shown error in the Examiner’s
obviousness rejection.

V. CONCLUSION
For the aforementioned reasons, the Examiner has not shown the
proper initial showing of anticipation of independent claim 1, and Appellants
have not shown error in the Examiner’s showing of anticipation of
independent claim 6 or the Examiner’s showing of obviousness of dependent
claim 16.

VI. ORDER
We affirm the anticipation rejection of claims 6 and 8-15, and the
obviousness rejection of claim 16. We reverse the anticipation rejection of
claims 1, 3-5, 7, and 17-20 and the obviousness rejection of claim 2.
Appeal 2009-009969
Application 11/306,780

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AFFIRMED-IN-PART

erc

LAW OFFICE OF DELIO & PETERSON, LLC.
121 WHITNEY AVENUE
NEW HAVEN, CT 06510