Ex Parte Fukatsu

Board of Patent Appeals and Interferences

Oct 13, 2009

10492626 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NORIYASU FUKATSU
____________________

Appeal 2009-003068
Application 10/492,6261
Technology Center 2100
____________________

Decided: October 13, 2009
____________________

Before JAY P. LUCAS, ST. JOHN COURTENAY III, and STEPHEN C.
SIU, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1-13 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and

1 Application effective date is April 14, 2004. The real party in interest is
Mitsubishi Denki Kabushiki Kaisha.
Appeal 2009-003068
Application 10/492,626
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held on October 6, 2009.

Appellant’s invention relates to a programmable controller for
switching a serial port between two devices using different communication
protocols. In the words of Appellant:
According to the above aspect, the serial port of the
programmable controller includes the switching unit which
properly uses the general-purpose communication protocol
function and the computer link-only protocol function which
uses procedure exclusive for the latter function. Thus, it is
unnecessary to successively set a parameter for properly using
the general-purpose communication protocol function and the
computer link-only protocol function using the procedure for
the latter function.

(Spec. 4, l. 25 to 5, l. 7).

Claim 1 is exemplary:
1. A programmable controller having a serial port for
serial communication, comprising:

a switching unit that switches the serial port in any one of
a first state, a second state, and a third state, the first state being
a state in which a general-purpose communication protocol
which establishes communication in accordance with a
specification of a partner equipment can be processed, the
second state being a state in which a computer link-only
protocol which establishes communication based on a fixed
specification can be processed, and the third state being an idle
state, wherein the switching unit switches the serial port

to the first state by a command that initializes the serial
port in a program for the general-purpose communication
protocol when the serial port is in the idling state,
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to the second state when the serial port receives a signal
from external equipment for starting the communication using
the computer link-only protocol,

to the idling state, upon the serial port being in the first
state, by a command that closes the serial port in the program
for the general-purpose communication protocol, and

to the idling state, upon the serial port being in the
second state, after the communication with the external
equipment using the computer link-only protocol is completed.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bender US 6,539,030 B1 Mar. 25, 2003
Walton US 6,609,185 B1 Aug. 19, 2003
Nikolich US 6,826,195 B1 Nov. 30, 2004
Waclawsky US 7,116,682, B1 Oct. 03, 2006

Applicant’s Admitted Prior Art (“AAPA”): Specification pages 1 to
4.
Masaru JP 3234240 Jun. 12, 2001
Yoshinori JP 2002-157014 May 31, 2002

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 5-6 and 8-11 stand rejected under 35 U.S.C. § 103(a) for
being obvious over AAPA in view of Bender.
R2: Claim 2 stands rejected under 35 U.S.C. § 103(a) for being obvious
over AAPA in view of Bender and further in view of Nikolich.
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R3: Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) for being
obvious over AAPA in view of Bender and Nikolich and further in view of
Walton.
R4: Claims 7 and 12-13 stand rejected under 35 U.S.C. § 103(a) for being
obvious over AAPA in view of Bender and further in view of Waclawsky.

Groups of Claims:
The rejections will be addressed in the order of the arguments.

Appellant contends that the claimed subject matter is not rendered
obvious by AAPA and Bender alone or in combination with the other
references for failure of the references to teach claimed limitations. The
Examiner contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We affirm the rejections.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
AAPA and Bender teach a switching unit for a serial port that changes states
in the manner claimed.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a programmable controller that switches a serial
port from one device to another, changing protocols as required by the
connection (Spec. 1, ll. 14-19). The first connection is to a computer or
similar device, using a general purpose communication protocol that can
be programmed. The second connection is to an external device using a
computer link-only protocol, in which the specification of the protocol is
set and not varied (Spec. 4, ll. 8-15). At the end of the message
transference, the controller returns to an idling state (Spec. 4, l. 22).
2. Bender teaches a method and device for connecting entities to a network
using one of many different protocols (Col. 2, ll. 42-45). The precise
protocol to use in any instance is selected during a negotiation
initialization stage (Col. 12, ll. 45-55). At the end of the transmission,
the connecting mechanism transitions to an inactive state, 610, from
which the process began (Col. 12, ll. 33-53).

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
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indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
[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.
Net MoneyIN, Inc. v. VeriSign et al., 545 F.3d 1359, 1371 (Fed. Cir.
2008) (emphasis added).

“This court has held in a number of decisions that a United States
patent speaks for all it discloses as of its filing date, even when used in
combination with other references.” In re Zenitz, 333 F.2d 924, 926 (CCPA,
1964) (internal citations omitted).

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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.” In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984)).
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). “[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application.” Phillips v. AWH
Corp., 415 F.3d at 1313 (Fed. Cir. 2005) (en banc).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellant’s
claims under 35 U.S.C. § 103 on pages 3 to 24 of the Examiner’s Answer.
In opposition, Appellant presents a number of arguments.

Arguments with respect to the rejection
of claims 1, 5 to 6 and 8 to 11
under 35 U.S.C. § 103 [R1]

The Examiner has rejected the noted claims for being obvious over
AAPA and Bender. Appellant first argues that the Bender reference “does
not disclose or suggest the terminals communicating without negotiating a
session protocol, i.e. via a fixed specification.” (App. Br. 14, top). “In other
words, if Bender was combined with the AAPA, then from the inactive state,
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the access terminal would go to an initialization state in which it would
negotiate the attributes (c.f., the computer link-only protocol where the
specification is fixed and no negotiations are required).” (Id.).
We have reviewed the claims and the Bender reference and do not
find this argument persuasive. The claim language in relevant part states,
“wherein the switching unit switches the serial port …to the second state
when the serial port receives a signal from external equipment for starting
the communication using the computer link-only protocol.” (Claim 1).
There is nothing in the claim language or the specification precluding a
negotiation or initialization when this switching takes place. We cannot
introduce into the claim language a negative limitation that is only argued by
Appellant. We look strictly at the words of the claim which merely mention
that the switch takes place, and is silent with respect to any initialization or
negotiation. ( See In re King, 801 F.2d at 1326.) In Bender, on receipt of a
control signal, which may be initiated by either side of the serial port, the
switching takes place (Col. 10, l. 1-10). The fact that the switching takes
place after a bit of initialization does not obviate the effectiveness of the
reference. The claim simply does not mention, nor forbid, that initialization
in this context.
Appellant next argues that “the APA and Bender, taken alone or in
any conceivable combination, fail to disclose or suggest a switching unit that
switches from an idle state to a computer link-only protocol that has a fixed
specification.” (App. Br. 14, middle). To better appreciate the claimed
“computer link protocol”, we observe from Figure 8 that this protocol is
initiated by the receipt of commands with a “header added to a head of the
communication frame and application data.” (Spec. 12, l. 3). In Bender,
the reference teaches that “[t]he protocols use signaling messages and/or
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headers to convey information to the other entity at the other side of the air
link.” (Col. 8, l. 62). We thus agree with the Examiner that it would be
obvious over this teaching to switch the serial port to the second (computer-
link) protocol simply using a header command to signal the establishment of
the linkage. Bender teaches a number of “fixed specification” protocols,
and the use of any of these would be obvious over the reference (Col. 12, l.
1-8).
With regard to claim 8, Appellant argues that “Bender does not
disclose a switching unit that sets up the serial port for the general purpose
communication protocol using a procedure for setting up the computer link-
only communication protocol as set forth in claim 8.” (App. Br. 18, middle).
The Examiner in the Answer itemizes the procedure for setting up the
linkages in either protocol (Ans. 8-9). The difference in the procedures is
merely the selection of the protocols; the selection of one or the other is an
obvious choice (Col. 12, ll. 1- 8). Thus the procedure does not vary, as
claimed, only the selection of the active protocol. We thus do not find error
in the rejection of this claim.

Arguments with respect to the rejection
of claims 2 to 4, 7, and 12 to 13
under 35 U.S.C. § 103 [R2, R3 R4]

Against each of these rejections, [R2],[ R3] and [R4], Appellant
argues that the secondary references, Walton, Nicolich, and Waclawsky,
each do not cure the deficient teachings in the AAPA and Bender references
(App. Br. 18, 19). As we did not find such deficiencies, the argument is
deemed unpersuasive.

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CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-13 under 35 U.S.C. § 103(a),
[R1], [R2], [R3], and [R4].

DECISION
The Examiner’s rejections [R1], [R2], [R3], and [R4] of claims 1-13
are Affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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