Ex Parte Chen et al

Board of Patent Appeals and Interferences

Mar 20, 2012

10779234 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHUNG-JUE CHEN, ALI GHIASI, JAY PROANO,
RAJESH SATAPATHY, and STEVE THOMAS
_____________

Appeal 2009-011668
Application 10/779,234
Technology Center 2400
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellants’ claimed invention is directed to a seamless port bypass
controller operation receiving an input signal at a first port of a port bypass
controller and selecting at least a second port coupled in a chain to the first
port. At least a portion of the received input signal may be switched from
the first port to the second port without initializing or reconfiguring the
second port. A retimed signal corresponding to at least a portion of the
received input signal may be switched to at least the second port without
initializing or reconfiguring the second port. See Spec. [28].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for seamless port bypass controller operation, the
method comprising:
receiving an input signal at a first port of a port bypass
controller;
selecting at least a second port coupled in a chain to said first
port; and
switching at least a portion of said received input signal from
said first port to at least said second port, wherein said second port
selects between said received input signal from said first port and a
retimed signal corresponding to at least a portion of said received
input signal for said second port.
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
DeKoning US 6, 055,228 A Apr. 25, 2000
Birmingham US 2004/0184721 A1 Sept. 23, 2004

The following rejection is before us for review:
The Examiner rejected claims 1-30 under 35 U.S.C. § 103(a) as
unpatentable over DeKoning in view of Birmingham.

ISSUE
The pivotal issue is whether the Examiner erred in finding that the
combination of DeKoning in view of Birmingham teaches the limitation:
“wherein said second port selects between said received input signal from
said first port and a retimed signal corresponding to at least a portion of
said received input signal for said second port,” as recited in claim 1
(emphasis added).

PRINCIPLES OF LAW
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the prior art. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974).

ANALYSIS
Appellants explain that paragraph 0039] of Birmingham discloses or
suggests that transmit port 324 (i.e., alleged “port 2”) of port bypass circuit
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element 310 (i.e., alleged “selector” 310) transmits the reconditioned data
signal to output port 122N+2 (i.e., the alleged port 2) for output. (App. Br.
11-12; Birmingham, ¶[0039]). Appellants argue that Birmingham “does not
disclose or suggest that the output port 122N+2 (i.e., the alleged port 2)
selects via the port bypass circuit element 310, data signals from the input
322 (i.e., un-retimed data signal), as alleged by the Examiner.” (App. Br.
12) (emphasis added) (see also Birmingham,¶[0039]).
Appellants further argue that Birmingham teaches away from
Appellants’ claim 1 because nowhere does Birmingham suggest outputting
any un-reconditioned input signal. (App. Br. 12). Appellants note that
Birmingham (¶¶[0005], [0008], [0039] to [0041]) discloses that the alleged
selector switch 310 only transmits the reconditioned signals at input 320, and
not the un-reconditioned signals at input 322. (Id. at 7). Appellants further
note that based on the background of Birmingham’s invention the purpose of
Birmingham is to transmit only reconditioned inputs signals at the output of
the blades (i.e., ports), and thus, all output signals are reconditioned signals
(i.e., alleged retimed signals) (Reply Br. 6; See also App. Br. 7).
We are persuaded by Appellants’ arguments. The purpose of
Birmingham is to overcome problems of the prior art by only providing
reconditioned signals as an output. Birmingham states:
One problem with this is that port bypass circuit blades
normally do not provide more than one or two retiming
elements, normally used to provide reconditioned data signals
that comply with Fibre-Channel signal quality specifications.
This means that data signals cannot be reconditioned at each of
the ports of the port bypass circuit blade before being
respectively transmitted to each of the blades.

(Birmingham,¶[0005]) (emphasis added).
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Accordingly, to solve the prior art problems, the port bypass circuit
310 only outputs a reconditioned signal to the second output port 122n+2
(see Birmingham ¶¶[0005], [0039]; and Fig. 3). The port bypass circuit 310
does not select between a received input signal from the first port 322 and a
retimed signal 320 corresponding to at least a portion of the received input
signal “for said second port” as required by claim 1 (see Birmingham, Fig.
3). We agree with Appellants that Birmingham teaches away from the port
bypass circuit 310 selecting between the received input signal from the first
port and the retimed/reconditioned signal. Birmingham at best only teaches
that the port bypass circuit 310 will output only the reconditioned signal to
the second port, and there will never be a choice between the two different
types of signals for the second port.
The Examiner’s response, which differs from the Final Rejection,
states that “a selection is made, based on the two received signals on port
320 and 322 on the port bypass circuit 310, as to whether to send to blades
through port 122n+2 or send to circuit 311.” (Ans. 19) (emphasis added).
This clarification by the Examiner does not address the disputed limitation
which includes a selection of a signal from two types of signals “for said
second port” as recited in claim 1. In other words, the claimed invention
requires that a selection is made between the “received input signal from
said first port and a retimed signal corresponding to at least a portion of said
received input signal for said second port” (claim 1)(emphasis added)—not
for the second port and the additional element of circuit 311 (see
Birmingham, Fig. 3). There is no selection between the two types of signals
for the second port, but rather, the reconditioned signal is only output or
always directed to the second port according to Birmingham.
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Stated otherwise, the term “select” is defined, in pertinent part, as “to
choose and take from a number”. AMERICAN DICTIONARY OF THE ENGLISH
LANGUAGE (1828 edition of Noah Webster’s Online Dictionary), available
at http://1828.mshaffer.com/d/word/select (last visited March 15, 2012).
Thus, the term “select” presupposes that a choice between two or more
options is made. In Birmingham there is no such choice taught, because the
bypass circuit 310 only outputs one option for the second port. Bypass
circuit 310 never has the choice to output the received input signal from the
first port to the second port. A single option for a choice does not constitute
a selection.
Furthermore, we note that we do not agree with the Examiner’s
assertion that “a selection is made, based on the two received signals on port
320 and 322 on the port bypass circuit 310, as to whether to send to blades
through port 122n+2 or send to circuit 311.” (Ans. 19). Birmingham
explicitly teaches: “[t]ransmit port 334 of retiming element 330 is
connected to receive port 320 of port bypass circuit element 310. Transmit
port 324 of port bypass circuit element 310 is connected to receive port 320
of port bypass circuit element 311 and to output port 122N+2” (¶ [0030]).
Thus, Birmingham teaches that both port bypass circuit element 311 and
output port 122N+2 receive the retimed signal from port 320 of the port
bypass circuit 310, and not that there is a selection as to whether to send the
retimed signal to port 122N+2 or circuit 311.
For the aforesaid reasons, we reverse the Examiner’s rejection of
claim 1 and for the same reasons the rejection of independent claims 2-30.

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CONCLUSION
The Examiner erred in finding that the combination of DeKoning in
view of Birmingham teaches the limitation of: “wherein said second port
selects between said received input signal from said first port and a retimed
signal corresponding to at least a portion of said received input signal for
said second port,” as recited in claim 1 (emphasis added).

ORDER
The Examiner’s rejection of claims 1-30 is reversed.

REVERSED

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