Ex Parte Lambert et al

Patent Trial and Appeal Board

Mar 11, 2014

11550792 (P.T.A.B. Mar. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIMOTHY MICHAEL LAMBERT and SEAN HART
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Appeal 2011-011826
Application 11/550,792
Technology Center 2100
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/550,792

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4 and 6-21. Claim 5 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphases added,
read as follows:

1. An information handling system (IHS) comprising:

a host computer comprising a downstream facing host
computer serial communication bus port and a serial communication
bus host controller in communication with the downstream facing host
computer serial communication bus port;

the serial communication bus host controller in communication
with the downstream facing host computer serial communication bus
port via a serial communication bus+ data line and a serial
communication bus- data line;

a first tri-state buffer connected to the serial communication
bus+ data line;

a second tri-state buffer connected to the serial communication
bus- data line; and

a circuit disposed between the serial communication bus host
controller and the downstream facing host computer serial
communication bus port, the circuit operable to disable the
downstream facing host computer serial communication bus port from
detecting presence of a peripheral device directly coupled to the serial
communication bus port.
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Examiner’s Rejections
(1) The Examiner rejected claims 1-4, 6-12, 14-18, and 21 as being
anticipated under 35 U.S.C. § 102(b) by Luke (US 6,279,060 B1, Aug. 21,
2001). Ans. 4-10.
(2) The Examiner rejected claims 13, 19, and 20 as being unpatentable
under 35 U.S.C. § 103(a) over Luke, Margulis (US 2007/0124474 A1, May
31, 2007, filed Nov. 30, 2005), and Chan (US 2003/0084133 A1, May 1,
2003). Ans. 10-11.
Appellants’ Contentions
(1) Appellants contend (Br. 10), inter alia, that the Examiner erred in
rejecting claims 1-4, 6, 7-12, 14-18, and 21 as being anticipated by Luke
because the portions of Luke cited by the Examiner fail to teach or suggest
the specific arrangement of a host computer and circuitry for disabling a
downstream facing serial communication bus port from detecting the
presence of a peripheral device, as set forth in independent claims 1, 7, and
14.
(2) Appellants contend (Br. 11-14) that the Examiner erred in
rejecting claims 13, 19, and 20 as being unpatentable over the combination
of Luke, Margulis, and Chan for similar reasons as provided with respect to
the anticipation rejection (see e.g., Br. 13).
Principal Issues on Appeal
Has the Examiner erred in rejecting claims 1-4 and 6-21 as being
anticipated or obvious because:
(1) Luke fails to disclose the specific arrangement of a host
computer and circuitry for disabling a downstream facing serial
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communication bus port from detecting the presence of a peripheral
device, as recited in independent claims 1, 7, and 14; and/or
(2) the Examiner has improperly combined multiple different
embodiments of Luke to meet the limitations recited in claims 1, 7,
and 14, resulting in the relied upon portions of Luke not being
arranged as recited in claims 1, 7, and 14?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (Br. 6-14) that the Examiner has erred, and
the Examiner’s response to Appellants’ arguments (Ans. 11-15). We concur
with Appellants’ conclusion the Examiner erred in finding that Luke or the
combination of Luke, Margulis, and Chan teaches or suggests the specific
arrangement of a host computer and circuitry for disabling a downstream
facing serial communication bus port from detecting the presence of a
peripheral device, as recited in independent claims 1, 7, and 14.

In addition, we are constrained by the record before us to find that the
Examiner erred in rejecting claims 1-4, 6, 7-12, 14-18, and 21 as being
anticipated by Luke based on the Examiner’s reliance on a plurality of
different and mutually exclusive embodiments to support the anticipation
rejection (in rejecting independent claims 1, 7, and 14 as being anticipated
by Luke, for example, the Examiner relies on Figures 2-5, 11, and 14 and
portions of columns 4, 5, and 8, which represent at least two or more
embodiments). By way of specific example with regard to claim 1, the
Examiner relies upon Figure 14 of Luke as disclosing the host computer
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(150), port (152 and 156), and host controller (154); Figure 5 of Luke as
disclosing the data lines; Figure 11 as disclosing the tri-state buffers
(122/124), and Figure 14 again as disclosing the circuit (152 and 156) in the
last paragraph of claim 1. However, it is not clear to us, and we will not
speculate as to, how the same elements asserted by the Examiner as the bus
port of claim 1 (elements 152 and 156) can also be the “circuit” recited in
the last paragraph of claim 1 as being disposed between the host controller
(154) and the bus port (previously stated by the Examiner to be elements 152
and 156 in Luke’s Fig. 14).
Luke’s Figures 2-5, 11, and 14 represent at least two or more different
embodiments of Luke’s invention. These multiple embodiments cannot be
combined in making a prima facie case of anticipation. In re Arkley, 455
F.2d 586, 587-88 (CCPA 1972).
The way in which the elements are arranged or combined in the claim
must itself be disclosed, either expressly or inherently, in an anticipatory
reference. “Anticipation requires the presence in a single prior art disclosure
of all elements of a claimed invention arranged as in the claim.” Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (emphasis
added). The requirement that the prior art elements themselves be “arranged
as in the claim” means that claims cannot be “treated . . . as mere catalogs of
separate parts, in disregard of the part-to-part relationships set forth in the
claims and that give the claims their meaning.” Lindemann Maschinenfabrik
GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984).
[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
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thing claimed and, thus, cannot anticipate under 35 U.S.C. §
102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(emphasis added).
In an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an ordinary] artisan
might somehow combine to achieve the claimed invention.” Id. at 1371.
Rather, the reference must “clearly and unequivocally disclose the claimed
[invention] or direct those skilled in the art to the [invention] without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.” Id. (quoting In
re Arkley, 455 F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking
and choosing may be entirely proper in the making of a 103, obviousness
rejection . . . it has no place in the making of a 102, anticipation rejection.”
Arkley, 455 F.2d at 587-88.
In view of the requirement that an anticipatory reference disclose all
of the claimed limitations arranged in the same way as recited in the claim
(discussed supra), we find that Luke fails to disclose a host computer and
circuitry for disabling a downstream facing serial communication bus port
from detecting the presence of a peripheral device, as recited and arranged as
in independent claims 1, 7, and 14. Luke’s serial disconnect bus 96, USB
port 92, bridge logic 102, tri-state buffers 122/124, bridge 152, USB host
154, and host computer 150 are not arranged or combined in the same way
as set forth in independent claims 1, 7, and 14, thus Luke cannot anticipate
claims 1, 7, and 14. Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d at 1459; Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
at 1371.
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Because the analysis of Luke with respect to claims 1, 7, and 14 is
relied upon for the remaining obviousness rejection, we likewise do not
sustain the obviousness rejection relying on Luke in combination with
various other references. Notably, the Examiner has not provided any
articulated reasoning to support the legal conclusion of obviousness with
regard to combining the various teachings of the plural embodiments and
disclosed prior art of Luke to teach or suggest the claimed invention recited
in claims 13, 19, and 20.
In view of the foregoing, we will not sustain the Examiner’s rejections
of claims 1-4 and 6-21.

CONCLUSIONS
(1) Luke fails to disclose the specific arrangement of a host computer
and circuitry for disabling a downstream facing serial communication bus
port from detecting the presence of a peripheral device, as recited in
independent claims 1, 7, and 14.
(2) The Examiner has improperly combined multiple different
embodiments of Luke to meet the limitations recited in claims 1, 7, and 14,
resulting in the relied upon portions of Luke not being arranged as recited in
claims 1, 7, and 14.
(3) The Examiner erred in rejecting claims 1-4, 6, 7-12, 14-18, and 21
under 35 U.S.C. § 102(b) as being anticipated by Luke, and as a result also
erred in rejecting claims 13, 19, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Luke, Margulis, and Chan.

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DECISION
The Examiner's rejections of claims 1-4 and 6-21 are reversed.

REVERSED

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