Ex parte DAYTON

Board of Patent Appeals and Interferences

Feb 27, 1998

08007060 (B.P.A.I. Feb. 27, 1998)

Application for patent filed January 21, 1993. According1
to appellant, this application is a divisional of application
07/614,230, filed November 15, 1990, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BIRNEY D. DAYTON
__________
Appeal No. 95-1461
Application 08/007,0601
__________
ON BRIEF
__________
Before KRASS, FLEMING and TORCZON, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 6, 8, 9 and 18 through 24, all of the claims
present in the application. Claims 10 through 17 have been
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canceled.
Appellant has filed an amendment after appeal, November 7, 1994,
which cancels claim 7. Therefore, claims 1 through 6, 8, 9 and
18 through 24 are properly before us on appeal.
The invention relates to a switch composed of identical
switch modules.
Independent claim 1 is reproduced as follows:
1. A crosspoint switch having M input terminals and N
output terminals and comprising (M/m) times (N/n)
crosspoint switch modules each having m input
conductors, n output conductors, means operable
selectively for interconnecting any one of the m input
conductors and any selected set of the n output
conductors, n input expansion conductors, and n input
expansion crosspoint elements operable selectively to
connect the n input expansion conductors to the n
output conductors respectively, (M/m) of the modules
having their input conductors connected to the M input
terminals respectively of the crosspoint switch, (N/n)
of the modules having their output conductors connected
to the N output terminals respectively of the
crosspoint switch, the input conductors of the first
module being connected to respective input conductors
of a second module and the output conductors of the
first module being connected to respective input
expansion conductors of a third module.
The references relied on by the Examiner are as follows:
Georgiou 4,635,250 Jan. 06, 1987
Franaszek 4,929,940 May 29, 1990
Claims 1, 2, 6 and 21 through 24 stand rejected under
35 U.S.C. § 102 as being anticipated by Georgiou. Claims 1
Appellant filed an appeal brief on July 6, 1994. We will2
refer to this appeal brief as simply the brief. Appellant filed
a reply appeal brief on November 7, 1994. We will refer to this
reply appeal brief as the reply brief. The Examiner responded to
the reply brief in a supplemental response, mailed March 20,
1995, stating that the reply brief has been entered and
considered and that no further response by the Examiner is deemed
necessary. The Appellant also filed an amendment after appeal to
the claims on November 7, 1994. In the supplemental response,
March 20, 1995, the Examiner indicates that the amendment has
been entered into the record. We note that the record has not
entered this amendment and direct the Examiner to formally enter
this amendment upon receiving the file from the board. For
purposes of this appeal, we will consider the amendment entered
and consider these claims before us on appeal.
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through 6, 8, 9 and 18 through 24 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Georgiou and Franaszek.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the briefs and the answer for 2
the details thereof.
OPINION
After a careful review of the evidence before us, we do not
agree with the Examiner that claims 1, 2, 6 and 21 through 24
are anticipated under 35 U.S.C. § 102 by Georgiou or that claims
1 through 6, 8, 9 and 18 through 24 are unpatentable under 35
U.S.C. § 103 over Georgiou and Franaszek.
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It is axiomatic that anticipation of a claim under § 102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984).
In the brief and the reply brief, Appellant argues that the
Examiner has failed to show that Georgiou teaches all of the
claimed elements of Appellant's claims. In particular, Appellant
argues that the Examiner has failed to show that Georgiou teaches
n input expansion conductors as recited in the claims. We note
that Appellant's claims 1 through 6, 8, 9, 18 through 20 and 24
recite "n input expansion conductors" and Appellant's claims 21
through 23 recite "n input expansion terminals."
The Examiner argues on page 7 of the answer that Georgiou
teaches five input expansion conductors and seven output
conductors. However, Appellant argues that the claims require
there should be one input expansion conductor for each output
conductor.
We note that the claims do require the same number, n, input
expansion conductors and output conductors. After a careful
review of Georgiou, we fail to find that the Examiner has shown
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that Georgiou discloses every element of Appellant's claims.
Therefore, we find that Georgiou fails to teach all of the
limitations of claims 1, 2, 6 and 21 through 24, and thereby the
claims are not anticipated by Georgiou.
Claims 1 through 6, 8, 9 and 18 through 24 are also rejected
under 35 U.S.C. § 103 as being unpatentable over Georgiou and
Franaszek. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions found
in the prior art, or by implications contained in such teachings
or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining obviousness,
the claimed invention should be considered as a whole; there is
no legally recognizable 'heart' of the invention." Para-Ordnance
Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d
1237, 1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996),
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
On page 4 of the answer, the Examiner states that Georgiou
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discloses all of the structure that corresponds to the claimed
limitations but does not include all the claimed terminology.
The Examiner argues that it would have been obvious to one of
ordinary skill in the art to have included the input, output and
expansion conductors as well as the expansion crosspoint elements
as claimed because the conductors and gate drivers of Georgiou
can at least operate as such.
However, after a review of both Georgiou and Franaszek, we
fail to find any teaching or suggestion of the Appellant's
claimed input expansion conductors. We are not inclined to
dispense with proof by evidence when the proposition at issue is
not supported by a teaching in a prior art reference or shown to
be common knowledge of unquestionable demonstration. Our
reviewing court requires this evidence in order to establish a
prima facie case. In re Knapp-Monarch Co., 296 F.2d 230, 232,
132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966).
In view of the foregoing, the decision of the Examiner
rejecting claims 1 through 6, 8, 9 and 18 through 24 is reversed.

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REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
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