Ex Parte Bell et al

Patent Trial and Appeal Board

Jul 21, 2016

13046610 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/046,610 03/11/2011
16581 7590 07/25/2016
Vierra Magen Marcus LLP I Intersil
575 Market Street
Suite 3750
San Francisco, CA 94105-2871
FIRST NAMED INVENTOR
David B. Bell
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ELAN-01254US1 5232
EXAMINER
HUYNH,KIMT
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
07/25/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@vierramagen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID B. BELL and PHILLIP J. BENZEL
Appeal2014-005924
Application 13/046,610
Technology Center 2100
Before NATHAN A. ENGELS, NORMAN H. BEAMER, and
SCOTT E. BAIN, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-24. No other claims are pending. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2014-005924
Application 13/046,610
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising:
(a) receiving an original I2C address;
(b) translating the original I2C address to a translated
I2C address; and
( c) outputting the translated I2C address;
wherein step (b) comprises
subtracting a specified offset value from the original
I2C address to produce the translated I2C address,
adding a specified offset value to the original I2C
address to produce the translated I2C address, or
using a look-up-table to produce the translated I2C
address based on the original I2C address, wherein the
look-up-table includes a plurality of original I2C addresses
and a plurality of translated I2C addresses, with each of
the translated I2C addresses corresponding to a different
one of the original I2C addresses.
THE REJECTION
Claims 1-24 stand rejected under 35 U.S.C. §102(e) as being
anticipated by Ellison (US 8,689,756 B2; Mar. 30, 2010).
ANALYSIS
Appellants agree with the Examiner that Ellison discloses an address
translation device that mediates communication between a host device and
slave devices that may share a common address. See Reply Br. 7-8.
Appellants argue, however, the Examiner erred in finding that Ellison's
device performs address translations using a look-up table or by adding or
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Appeal2014-005924
Application 13/046,610
subtracting a "specified offset value" to the original 12C address as required
by claim 1. App. Br. 12-17; Reply Br. 2-5.
The Examiner finds Ellison's device performs address translations by
"flipping" or reversing one of the bits of a binary original address. Final
Act. 2-3; Ans. 11-12. Further, the Examiner finds Ellison's methods are
"equivalent" to the methods of claim 1 that require a look-up table or offset
values for address translations.
As Appellants argue, Ellison does not disclose performing address
translations using offset values or a look-up table as required by claim 1.
We therefore agree with Appellants that Ellison does not anticipate claim 1.
See Net Moneyin, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (2008)
("Because the hallmark of anticipation is prior invention, the prior art
reference-in order to anticipate under 35 U.S.C. § 102-must not only
disclose all elements of the claim within the four comers of the document,
but must also disclose those elements 'arranged as in the claim."') (quoting
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.Cir.1983)).
We are similarly persuaded of error in the Examiner's rejection of
claim 12, in which the Examiner finds the incoming side and outgoing side
of Ellison's address translation device is "equivalent" to the first and second
sides of an I2C-bus as claimed. See Ans. 13. Because Ellison only discloses
sending commands to devices on the outgoing side of the address translation
device, we agree with Appellants that Ellison does not disclose sending a
first command to a device on the first side and sending a second command to
a device on the second side of the I2C bus as claimed. See App. Br. 20-22;
Reply Br. 7-9.
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Appeal2014-005924
Application 13/046,610
For the reasons discussed above, we reverse the Examiner's findings
that Ellison anticipates independent claim 1, as well as independent claims
10, 14, and 21 and dependent claims 2-9, 11, 15-20, and 22-24, each of
which requires an offset value or look-up table in limitations similar to those
discussed above. We also reverse the Examiner's rejections of independent
claim 12, as well as dependent claim 13 which depends from claim 12.
DECISION
We reverse the Examiner's rejections of claims 1-24.
REVERSED
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