Ex Parte Nowlin et al

Board of Patent Appeals and Interferences

May 24, 2012

09991089 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/991,089 11/13/2001 Dan H. Nowlin ITL.1860US (P12911) 4764
47795 7590 05/25/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
PEACHES, RANDY
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
05/25/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAN H. NOWLIN,
HARI K. TADEPALLI, and
PAUL R. ZURCHER
____________________

Appeal 2010-0014991
Application 09/991,089
Technology Center 2600
____________________

Before JEAN R. HOMERE, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Intel Corp. (App. Br. 4.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-12 and 19-35. Claims 13-18 have been canceled. (App.
Br. 4.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
Appellants’ Invention
Appellants invented a method and system wherein a software-based
switching mechanism installed on a plurality of computers allows the
computers to remotely share a set of input-output (I/O) devices. In particular,
upon receiving a wireless request from a slave computer to relinquish
control of an I/O device, a master computer transfers a token to the slave
computer thereby surrendering wireless control of the I/O device thereto.
(Spec., ¶¶ [0001], [0021]- [0022].)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A method comprising

a first instance of a software program resident and
operating on a first machine executing in coordination with a
second instance of the software program resident and operating
on a second machine to

receive a wireless request, at the first machine;

switch control of a device to a second machine;

relinquish control of said device at said first machine;

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transfer a token from said first machine to said second
machine; and

establish wireless control of said device at said second machine.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Parry US Patent App. Pub. No.: 2002/0128041 A1 Sep. 12, 2002
(Filed Mar, 9, 2001)
Wu US Patent App. Pub. No.: 2003/0083056 A1 May 1, 2003
(Filed Oct. 30, 2001)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-4, 6-12, and 19-35 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Parry.
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parry and Wu.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 14-26.
Anticipation Rejection
Representative Claim 1
Dispositive Issue: Have Appellants shown that the Examiner erred in
finding that Parry’s disclosure describes a first instance and a second
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instance of a switching software program residing on a first computer and a
second computer respectively to assume control of a wireless I/O device, as
recited claim 1?

Appellants argue that the Examiner erred in finding that Parry
anticipates claim 1 because Parry does not describe the disputed limitations
emphasized above. (App. Br. 12). According to Appellants, while Parry
discloses a switching mechanism for allowing computers to share control of
wireless I/O devices, Parry’s switching mechanism is a separate switching
device and not an instance of software installed on a mechanism as recited
in claim 1. (App. Br. 16-17). Further, Appellants argue that Parry’s
disclosure that the switching mechanism can be implemented in software
does not remedy the noted deficiencies. (Id.) In response, the Examiner
finds that Parry’s disclosure of implementing the switching mechanism in
software describes the disputed limitations. (Ans. 11-12.)
On the record before us, we do not agree with the Examiner’s
findings and ultimate determination of anticipation of claim 1. Parry
discloses a switching device for allowing a plurality of computing devices to
wirelessly share a plurality of I/O devices. (¶¶ [0021], [0023].) In particular,
after establishing a link with each of the identified computing devices, the
switching device allows a user to wirelessly select a computing device with
which to interact. (¶¶ [0031], [0032].) Parry also discloses implementing the
switching method of the computing device in hardware, software or a
combination thereof. (¶ [0026].) We find that Parry discloses switching
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software stored at a central location to allow a plurality of computing
devices to wirelessly share I/O devices. However, we find that the
computing devices do not have instances of the software stored therein.
Rather, the software performs the switching operation from the switching
device itself (a central location), and not from the computing devices to
assume control of the I/O devices as required by the claims. Consequently,
Parry does not describe the disputed limitations. Because Appellants have
shown that Parry does not describe at least one limitation required by the
claim, we need not address Appellants’ other arguments. It follows that
Appellants have shown error in the Examiner’s rejection of claim 1.
Because claims 2-4, 6-12 and 19-23 also recite the disputed
limitations discussed above, it follows that Appellants have similarly shown
error in the Examiner’s rejection of those claims.
As per claims 24-35, Appellants argue that Parry does not describe a
receiving a wireless request not made on a physical switchbox to switch
control of a device. (App. Br. 19-23.) This argument is not persuasive. We
find that Parry’s disclosure of a switching device implemented in software to
allow a user to selectively switch to a desired computing device discloses a
selected computing device receiving a switching request from a non-physical
switchbox (i.e., the switching software). (¶¶ [0026], [0032].) It follows that
Appellants have not shown error in the Examiner’s anticipation rejection of
claims 24-35.

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Obviousness Rejection
Because claim 5 also recites the disputed limitations discussed
above for claim 1, and because that Wu does not cure the noted deficiencies
of Parry, Appellants have also shown error in the Examiner’s rejection of
claim 5.
DECISION
We affirm the Examiner’s anticipation rejection of claims 24-35.
However, we reverse the rejections of claims 1-12, and 19-23 as set forth
above.
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-INPART

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