Ex Parte Finch

Board of Patent Appeals and Interferences

Jan 23, 2009

09844747 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM R. FINCH
____________

Appeal 2008-2562
Application 09/844,747
Technology Center 2400
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Decided: January 23, 2009
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Before JOSEPH L. DIXON, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-35. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2008-2562
Application 09/844,747

THE INVENTION
The disclosed invention relates generally to communications systems.
More particularly, the present invention relates to multi-PHY
communication without an ATM bus master. (Spec. 1, ll. 6-7).
Independent claim 1 is illustrative:
1. A communications system, comprising:

a bus including at least one data line and control lines;

a first device coupled to the bus;

a second device coupled to the bus, the data lines being
coupled between the first and second devices; and

a handshaking unit coupled to the control lines of the bus
and being adapted to determine if the first and second devices
are capable of completing a data transfer and enable the first
and second devices to facilitate the data transfer.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the anticipation and obviousness rejections:
Rumer US 6,618,376 B2 Sep. 9, 2003
(filed Mar. 14, 2001)
Skokan US 5,412,783 May 2, 1995
(filed Jul. 2, 1993)

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Application 09/844,747

THE REJECTIONS
1. The Examiner rejected claims 1-3, 5, 25-27, and 29 under
35 U.S.C. § 102(b) as being anticipated by Skokan.
2. The Examiner rejected claims 4, 6-24, 28, and 30-35 under
35 U.S.C. § 103(a), as being unpatentable over Skokan in view
of Rumer.
“[T]he examiner bears the initial burden on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Therefore, we look to Appellant’s Briefs to show error in the proffered
prima facie case.
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

APPELLANT’S CONTENTIONS
1. Appellant contends that Skokan fails to teach the limitation of
“a handshaking unit coupled to the control lines of the bus”
(App. Br. 6).
2. Appellant also contends that Skokan teaches that the bus
disclosed in Skokan contains separate control lines which do
not carry handshaking signals. (Id.).

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Appeal 2008-2562
Application 09/844,747

ISSUE
Has Appellant shown the Examiner erred in determining that Skokan
discloses “a handshaking unit coupled to the control lines of the bus,” and
“providing handshake signals on the control lines?”

PRINCIPLES OF LAW
Anticipation under 35 U.S.C. § 102
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, 1375-76 (Fed. Cir. 2005) (citation omitted).

FINDINGS OF FACT
1. Skokan teaches that handshake signals are included in the
timing signals 12 provided by connecting network segment 10.
(Col. 3 ll. 18-20, 35-38 and 50-53; Fig. 2).
ANALYSIS
As discussed above, Appellant contends that Skokan fails to disclose a
handshaking unit coupled to the control lines of the bus, and providing
handshake signals on the control lines. We agree.
The Examiner contends that Skokan clearly discloses a handshaking
unit being adapted to determine and facilitate the data transfer. The
Examiner further contends that Skokan clearly teaches a simple handshaking
unit (e.g., a handshake signal). (Ans. 7).
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Appeal 2008-2562
Application 09/844,747

We note that claims 1 and 13 recite a handshaking unit in the form of
structural element as shown in Appellant’s Fig. 1 ref. 50. The claimed
handshaking unit not only provides the handshaking signals, but is also
coupled to the control lines. It is our reasoned conclusion that neither of
these claimed limitations is disclosed in Skokan.
Skokan teaches that handshake signals are included in the timing
signals 12 provided by connecting network segment 10 (FF 1). Thus,
Skokan is silent as to the handshaking signals being provided by a unit
coupled to the control lines, since the handshaking signals are described as
part of the timing signals (FF 1). Thus, we find that Skokan does not
explicitly disclose a handshaking unit coupled to control lines. The
Examiner further contends the handshaking signals as shown in Figs. 3-5 are
inherently coupled to the control bus, based on the teachings of Figs. 3-5.
(Ans. p. 6). However, we agree with Appellant’s assertion that according to
Skokan, the handshaking signal is a separate entity (included in the timing
signals 12, FF 1) and is not coupled to the control lines 13. (Reply Br. p. 3).
The standard for anticipation according to Section 102 of Title 35 requires
that the reference discloses the limitations to be combined in the same
manner as claimed.
[U]nless a reference discloses within the four corners of
the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the
same way as recited in the claim, it cannot be said to
prove prior invention of the thing claimed and, thus,
cannot anticipate under 35 U.S.C. § 102.

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Application 09/844,747

Net MoneyIN, Inc. v. VeriSign et al., 545 F.3d 1359, 1371 (Fed. Cir.
2008)(emphasis added).
For the reasons discussed above, we find that Skokan does not
disclose the limitation of a handshaking unit coupled to the control lines, as
recited in independent claims 1 and 13, or providing the handshaking signals
on the control lines, as recited in independent claim 25.
Based on the record before us, we conclude that Appellant has shown
that the Examiner erred in determining that Skokan discloses the limitations
of “a handshaking unit coupled to the control lines of the bus,” and
“providing handshake signals on the control lines.” Accordingly, we reverse
the Examiner’s rejections of claims 1, 13, and 25, and dependent claims 2, 3,
5, 26, 27, and 29, under 35 U.S.C. § 102(b) as being anticipated by Skokan.

Obviousness under 35 U.S.C. § 103
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” Id. at 1740.

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Appeal 2008-2562
Application 09/844,747

Claims 4, 6-24, 28, and 30-35
We next consider the Examiner’s rejection of claims 4, 6-24, 28, and
30-35 under 35 U.S.C. § 103(a) as being unpatentable over Skokan in view
of Rumer.
We note that claims 4, 6-24, 28, and 30-35 depend from claims 1, 13,
and 25 respectively. The Examiner has not shown, nor do we find, that
Rumer cures the deficiencies of Skokan that were discussed supra with
respect to claims 1, 13, and 25. Accordingly, we reverse the Examiner’s
rejection of claims 4, 6-24, 28, and 30-35 under 35 U.S.C. §103(a) as
unpatentable over Skokan in view of Rumer.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude the
following:
Appellant has shown that the Examiner erred in determining that
Skokan teaches the claimed limitations of “a handshaking unit coupled to the
control lines of the bus,” and “providing handshake signals on the control
lines.”

DECISION
The decision of the Examiner rejecting claims 1-3, 5, 25-27, and 29
under 35 U.S.C. § 102(b) is reversed.

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Appeal 2008-2562
Application 09/844,747

The decision of the Examiner rejecting claims 4, 6-24, 28, and 30-35
under 35 U.S.C. § 103(a) is reversed.

REVERSED

pgc

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