Ex Parte Barker et al

Board of Patent Appeals and Interferences

Jan 16, 2009

09839179 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH JAMES BARKER,
HAYDEN CLAVIE CRANFORD, JR., CHARLES REEVES HOFFMAN,
JEFFREY JAMES LYNCH, and MARK EDMUND SCHEUER
____________

Appeal 2008-2677
Application 09/839,179
Technology Center 2100
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Decided: January 16, 2009
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
A Patent Examiner rejected claims 1, 2, and 4-20. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b)

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A. INVENTION
The invention at issue on appeal relates to power conservation in
communication systems. If both devices are capable of a low power mode,
then subsequently, in response to conditions of low usage, the devices
exchange signals indicating eligibility. If both devices are eligible for the
low power mode, then both ends of the system enter a low power usage state
and remain therein until signals are exchanged that permit data
communication by resumption of normal power modes by both ends of the
data exchange system. (Spec. 1-2.)

B. ILLUSTRATIVE CLAIM
1. A method of conserving power consumption in a
communication system which includes components capable of
selectively entering a low power operating mode, components capable
of determining eligibility of the system to enter a low power operating
mode based on operator generated signals, time of day, or non-use of
the system for a period of time, or a combination thereof, and an auto-
negotiation feature by exchanging messages indicative of a low power
operating mode capability, using an auto-negotiation feature to
interpret exchanged signals to verify that connected systems include
the low power mode capability and eligibility to enter the low power
mode, and transmitting a signal that a communications session is
completed to cause connected systems to enter the low power mode.

C. REFERENCES
The Examiner relies on the following references as evidence:
Edem US 5,805,597 Sep. 8, 1998
Hobson US 6,360,327 B1 Mar. 19, 2002

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D. REJECTIONS
The Examiner makes the following rejections:
Claims 1-2 and 4-8 stand rejected under 35 U.S.C. § 102(b) as being
clearly anticipated by Edem.
Claims 9-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edem in view of Hobson.

ISSUE
Have Appellants shown error in the Examiner's initial showing of
anticipation of claims 1, 2, and 4-8 over Edem?

PRINCIPLES OF LAW
35 U.S.C. § 102
"[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, 1457 (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).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
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applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly
interpreted claim must then be compared with the prior art.
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).
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 Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
At the outset we note that Appellants' "Summary of the Claimed
Subject Matter" does not specifically address the specific claim language
and is a generalized presentation with respect to the disclosed invention. For
example, in independent claim 4, Appellants set forth "means plus function"
limitations, but the "Summary of the Claimed Subject Matter" does not
correlate those functions to the disclosed structure, acts or materials in the
Specification. Therefore, it is unclear what "protocol" Appellants refer to in
the arguments since a protocol is not set forth in the claims, but a "protocol
means" is set forth. Additionally, each of the independent claims appears to
set forth a method, but it is unclear where each of the distinct steps of the
method begins and ends. Therefore, we interpret the claims giving the
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claimed terminology its ordinary and customary meaning. With this as a
starting point, we address Appellants' arguments directed to anticipation.
Appellants argue that Edem teaches neither the eligibility criteria nor
components as recited in independent claim 1 nor a protocol as recited in
independent claim 4 nor an exchange of signals as recited in independent
claim 5 for determining eligibility. (App. Br. 3). Appellants contend that
there is nothing in Edem about "eligibility" to enter a low power mode being
based on certain factors, and certainly not any component or protocol or
exchange of signals for such. Appellants further contend that the claimed
invention has two distinct functions taught and claimed. (App. Br. 3-4).
Here, we find Appellants' arguments to be based upon an overly broad
generalization of the claimed invention rather than the specific language
recited in the claims. Therefore, we do not find Appellants' arguments
persuasive of error in the Examiner's initial showing of anticipation as set
forth at pages 3-4 of the Answer.
We find that Edem teaches the use of an auto-negotiation procedure to
reconfigure the link for low power mode operations and uses an auto-
negotiation protocol as identified in column 13 to switch between 10BASE
T 205 and low power mode 204. Further, at the end of column 8 through
column 9, Edem teaches “network end points would negotiate to
communicate using the low power protocol when there was no or little
communication traffic between the two end points." We find this
communication to be both an eligibility and a capability determination, as
claimed.
Edem further teaches the use of the IEEE P802.9a specification which
defines protocols and mechanisms required to implement a remote line
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powering scheme and defines an auto-negotiation scheme for configuring an
interface between two network end points. We find this communication to
be both an eligibility and a capability determination, as claimed. Appellants
argue that first, there is the function of determining capability of both ends
to enter a low power mode, and then if, and only if, both ends are capable of
entering a low power mode, then determining if both ends are eligible to
enter a low power mode. (App. Br. 4). Here, we find Appellants' argument
goes beyond the express limitations recited in independent claims 1, 4, and
5. Therefore, Appellants' argument is not persuasive of the error in the
Examiner's initial showing of anticipation.
With respect to dependent claims 2 and 6-8, Appellants argue that
Edem does not show "selectively reducing portions of various devices to a
low power mode." (App. Br. 4). The Examiner maintains that columns 10
and 11 of Edem teaches selectively detecting and controlling portions.
(Answer 6). We agree with the Examiner that those portions of Edem
clearly identify that portions of the circuitry are selectively modified for the
variation in data transmission and power usage between the two power
modes. Therefore, we find Appellants' argument unpersuasive and does not
show error in the Examiner's initial showing of anticipation.

PRINCIPLES OF LAW
35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

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KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art,", and discussed circumstances in which a patent might be determined to
be obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383
U.S. 1, 12 (1966)). The Court reaffirmed principles based on its precedent
that "[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results." Id.
The operative question in this "functional approach" is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 1740.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1739).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 127 S. Ct. at
1741).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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ISSUE
Have Appellants shown error in the Examiner's initial showing of
obviousness of the combination of Edem in view of Hobson?

ANALYSIS
With respect to dependent claims 9-20, Appellants argue that the
addition of the Hobson reference does not cure the asserted deficiencies in
Edem and that the Hobson reference is not dealing with communications
systems and thus the operation of the Hobson system is quite different from
that of Appellants. (App. Br. 5-6). While we agree with Appellants that
there are some differences in the end a use of the system of Hobson, we find
that Appellants' arguments at pages 5-6 of the Brief do not address the
merits of the Examiner's reliance upon Hobson for the asserted claimed
features nor does Appellants' general commentary regarding Hobson show
error in the Examiner's line of reasoning for the combination as asserted by
the Examiner at pages 7- 8 of the Answer.

CONCLUSION
For the aforementioned reasons, Appellants have not shown that the
Examiner erred in rejecting claims 1, 2, and 4-8 over Edem; and Appellants
have not shown that that the Examiner erred in rejecting claims 9-20 over
Edem in view of Hobson.

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Application 09/839,179

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ORDER
We affirm the anticipation rejection of claims 1, 2, and 4-8 and the
obviousness rejections of claims 9-20.

AFFIRMED

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