Ex Parte Choi

Patent Trial and Appeal Board

Mar 29, 2016

13137421 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/137,421 08/15/2011
30593 7590 03/31/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
FIRST NAMED INVENTOR
Jung-hwan Choi
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.
2557-000296/US/COA 3910
EXAMINER
DAVID, MATTHEW
ART UNIT PAPER NUMBER
2615
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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):
dcmailroom@hdp.com
pshaddin@hdp.com
jcastellano@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNG-HWAN CHOI
Appeal2013-004023
Application 13/137,421
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 15-21, 23, and 24, all the claims presently pending
in the application. Claims 1-14 and 22 have been canceled. 1 We have
1 The Advisory Action mailed July 10, 2012 states that Appellant's After
Final Amendment was entered (p. 1, box 7). The Amendment filed June 27,
2012, after the Final Office Action mailed April 27, 2012, canceled claims
1-14 (Amendment filed June 27, 2012, p. 2), as well as claim 22
(Amendment filed June 27, 2012, p. 3), and amended claim 20 to include the
Appeal2010-0032683
Application 13/137,421
jurisdiction under 35 U.S.C. § 6(b).
We do not reach the Examiner's anticipation rejection of claim 20
based on the teachings of Baker (US 7,941,056 B2; issued May 10, 2011)
because (i) the Examiner neither addresses the merits of, nor otherwise
restates, the anticipation rejection in the Answer; and (ii) Appellant fails to
present any arguments as to the anticipation rejection in the Appeal Brief,
and instead argues the non-obviousness of claim 20. 2 The Examiner
presented new grounds of rejection as to claim 20 (based on obviousness) in
the Answer (see Ans. 2 and 5-7), which Appellant responds to in the Appeal
Brief (see App. Br. 7 and 9-10). 3 Therefore, the obviousness rejection of
features of canceled claim 22. Therefore, due to the cancelation of claim 22,
only the rejections of claims 15-21, 23, and 24 are on appeal (although
claims 15-24 were finally rejected).
2 The Examiner finally rejected claim 20 for anticipation over Baker (Final
Act. 4) and has not withdrawn the rejection (see generally Ans. 2-11).
Furthermore, the Notice of Panel Decision from Pre-Appeal Brief Review
(mailed August 23, 2012, at page 2, box 2), indicates that claim 20 is
rejected (and only an anticipation rejection existed prior to this Notice).
Appellant recognizes the status of claim 20 as being rejected for anticipation
over Baker and for obviousness over the combination of Baker and
Uttermark (see App. Br. 7). However, Appellant only presents arguments as
to the obviousness rejection over Baker and Uttermark (see App. Br. 7-13).
The Examiner does not address the merits of claim 20 as it relates to the
anticipation rejection in the Answer. Therefore, the anticipation rejection of
claim 20, while still pending, has not been addressed on the merits by either
the Examiner or Appellant, and is not ripe for review.
3 We note the absence of any Director's signature on the new ground of
rejection presented in the Answer. However, Appellant did not file a
petition regarding, or otherwise object to, the new ground of rejection of
claim 20 for obviousness in the allotted time frame.
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Application 13/137,421
claim 20 is properly before us and will be addressed herein, instead of the
anticipation rejection of claim 20. We affirm the Examiner's obviousness
rejections of (i) claims 15-20 over the combination of Baker and Uttermark
(US 4,675,861; issued June 23, 1987); and (ii) claims 21, 23, and 24 over the
combination of Baker and Uttermark. 4,5
Disclosed Invention
The invention concerns a memory module with separate paths for
carrying high-speed and low-speed signals to and/or from the memory
module, and an associated method. Spec. i-fi-12 and 9; Abs.; claims 15 and
20).
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 15 and 20, which are reproduced below with bracketed
lettering and emphases added:
4 The Examiner finally rejected claims 21, 23, and 24 for obviousness over
Baker and Uttermark (Final Act.7-10) and has not withdrawn the rejection
(see Ans. 7-8). Appellant recognizes the status of claims 21, 23, and 24 as
being rejected (see App. Br. 14). However, Appellant only presents
arguments as to the obviousness rejection over Baker and Uttermark as to
claims 15-20 (App. Br. 7-13; see also Reply Br. 1--4). Because Appellant
fails to present any separate arguments as to the obviousness rejection of
claims 21, 23, and 24, we affirm the rejection of these claims for the reasons
provided as to claim 20 from which these claims depend.
5 The Examiner's non-statutory obviousness-type double patenting rejection
of claims 15-24 (see Final Act. 2-3) was withdrawn in response to the
terminal disclaimer filed by Appellant on June 27, 2012. Ans. 9. Therefore,
this rejection is not before us and will not be addressed further in this
Opinion.
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Application 13/137,421
15. A method of communicating with a memory device,
compnsmg:
sending low-speed signals for the memory device over a
first connector;
sending high-speed signals for the memory device over a
second connector, the second connector is configured to connect
an optical fiber line; and
[A J receiving n-bit serial data from the optical fiber line
through the second connector;
[BJ converting the n-bit serial data into m-bit parallel
data; and
[CJ outputting each m-bit parallel data to the memory
device, wherein m, n are natural numbers.
20. A controller comprising:
a first connector configured to carry low-speed signals for
a memory device;
a second connector configured to carry high-speed signals
for the memory device, wherein the second connector is
configured to connect an optical fiber line for carrying the high-
speed signals, and
[DJ a converter configured to receive n-bit serial data
from the optical fiber line through the second connector, to
convert then-bit serial data into m-bit parallel data and to output
the m-bit parallel data to the inside of the controller.
Principal Issue on Appeal
Based on Appellant's arguments in the Appeal Brief (App. Br. 7-14)
and the Reply Brief (Reply Br. 1--4), the following single issue is presented
on appeal:
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Application 13/137,421
Has Appellant shown that the Examiner erred in rejecting claims 15-
21, 23, and 24 as being unpatentable under 35 U.S.C. § 103(a) for
obviousness, because the combination of Baker and Uttermark fails to
disclose limitations [A]-[C] as recited in independent claim 15, and/or the
commensurate limitation [DJ recited in independent claim 20?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 4--10; Ans.
2-8) in light of Appellant's contentions in the Appeal Brief (App. Br. 7-14)
and the Reply Brief (Reply Br. 1--4) that the Examiner has erred, as well as
the Examiner's response to Appellant's arguments (Ans. 2-11). We
disagree with Appellant's conclusions with respect to the obviousness
rejection of claims 15-20 over the combination of Baker and Uttermark.
With regard to the obviousness rejection of representative independent claim
1 and remaining independent claim 20, we agree with the Examiner's
conclusions that the combination of Baker and Uttermark discloses
limitations [A ]-[CJ recited in claim 1, and the commensurate limitation [DJ
recited in claim 20 (Final Act. 5---6; Ans. 2-7 and 9-11 ). We provide the
following for emphasis.
Obviousness Rejection of Claims 15-20
Appellant presents argument in the Appeal Brief only as to the
obviousness rejection of independent claim 15 (App. Br. 11-13) and
remaining independent claim 20 (App. Br. 9-10). Claims 16-19 depend
from claim 15 and contain similar features. Appellant, in the Reply Brief,
presents only general arguments as to the combination of Baker and
Uttermark, without specifying any particular claim (see generally Reply Br.
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Application 13/137,421
1--4). In view of the foregoing, we select independent claim 15 as
representative of the group of claims consisting of claims 15-19, and we will
address only claims 15 and 20 below. Claims 16-19 stand/fall with claim 15
from which these claims depend, and claims 21, 23, and 24 stand/fall with
claim 20 from which these claims depend.
With regard to both claim 15 (App. Br. 11-13), and claim 20 (App.
Br. 9-10), Appellant contends that the Examiner employed impermissible
hindsight in combining Baker and Uttermark, and there is no motivation to
combine these references. Appellant asserts the lack of motivation and
presence of hindsight are due to Baker's already-existing use of optical
communications with an optical link 108a (which presumably would avoid
noise produced using serial transmission), leaving no reason to look to
Uttermark (other than hindsight) for a converter which would introduce
noise (App. Br. 9-10 and 12-13).
We find this line of reasoning unpersuasive of Examiner error. To the
contrary, since both Baker and Uttermark are in the same field of endeavor,
optical communications using optical links/fibers, one of ordinary skill in the
art at the time of Appellant's effective filing date, would have been
motivated to modify Baker's optical method and system with Uttermark's
optical transmission method and circuit "for the purpose of optically
transmitting the parallel 18-bit data from the controller to the memory
module" (Ans. 4), and because both Baker and Uttermark suggest optical
transmission methods may be substituted for one another (Ans. 4).
Therefore, we agree with the Examiner (Ans. 11) that substituting
Uttermark's non-wave division multiplexing (non-WDM) optical
transmission means for the WDM optical transmission means of Baker
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Application 13/137,421
would have been obvious in view of the advantageous and predictable
results obtained (e.g., that of reducing the plural channels used by Baker's
WDM optical transmission means by employing Uttermark's non-WDM
optical transmission means, as suggested by Baker (see Ans. 11 citing Baker
at col. 5, 11. 3-16)). Thus, we agree with the Examiner that there is proper
motivation to combine the methods and systems of Baker and Uttermark
(Final Act. 6; Ans. 4, 6-7, and 9-11 ).
In view of the foregoing, we sustain the Examiner's obviousness
rejection of representative independent claim 15, as well as claims 16-19
grouped therewith. We also sustain the Examiner's obviousness rejection of
independent claim 20 based on the combination of Baker and Uttermark for
the same reasons discussed with respect to claim 15, and because we agree
with the Examiner that the converter features of canceled claim 22 (added to
claim 20 by Appellant's after final amendment canceling claim 22), are
encompassed by the teachings or suggestions of the combination of Baker
and Uttermark. 6
6 The Examiner states in the Final Rejection:
Regarding claim 22, Uttermark et al. teach the additional
limitation of a converter (Fig. 1, 50) configured to receive the n-
bit serial data (Fig. 1, H) from the optical fiber line (Fig. 46)
through a second connector (Fig. 1, 45) to convert the n-bit
serial data into the m-bit parallel data (Fig. 1, 66) and to output
them-bit parallel data to the inside of the controller as in Baker
et al. (Fig. 1, 104).
Final Act. 9. We also note our agreement with the Examiner's prima facie
case of obviousness of claim 20 over Baker and Uttermark found at pages 5
to 7 of the Answer (see Ans. 6 making similar findings as to Uttermark).
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Application 13/137,421
Obviousness Rejection of Claims 21, 23, and 24
Appellant has failed to show that the Examiner erred in determining
that the combination of Baker and Uttermark teaches or suggests a controller
as recited in dependent claims 21, 23, and 24 (see App. Br. 11-13
(addressing only the obviousness of claims 15-19; see also App. Br. 7-10
(addressing the obviousness of claim 20)). See 37 C.F.R. § 41.37(c )(1 )(iv)
(stating that arguments not presented in the briefs by Appellant will be
refused consideration). As such, Appellant has not separately argued that
the Examiner erred in rejecting claims 21, 23, and 24 for obviousness, or
otherwise shown this rejection to be in error. Accordingly, we sustain this
rejection for the same reasons as claim 20 from which these claims depend
CONCLUSIONS
(1) We do not reach the merits of the anticipation rejection of claim
20 over Baker. Because the Examiner added Uttermark to Baker in making
the obviousness rejection of claim 20 on appeal (due to the after final
amendment which added the features of canceled claim 22 to claim 20), we
suggest the Examiner withdraw the anticipation rejection should there be
any further prosecution of this application.
(2) The Examiner did not err in rejecting claims 15-20 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Baker and
Uttermark.
(3) Appellant has not shown the Examiner's rejection of claims 21,
23, and 24 as being unpatentable over the combination of Baker and
Uttermark to be in error.
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Application 13/137,421
DECISION
We affirm the Examiner's obviousness rejection of claims 15-21, 23,
and 24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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