Ex Parte Simmons et al

Board of Patent Appeals and Interferences

Jun 13, 2012

10159718 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte IAN M. SIMMONS, DAVID J. WOOLGAR, NORBERT N.
EIGELDINGER, RAINER G. ZWING, and PAUL D. WOLF
____________________

Appeal 2010-001983
Application 10/159,718
Technology Center 2400
____________________

Before LANCE LEONARD BARRY, THU A. DANG,
and ANDREW J. DILLON, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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I. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”), on May 29, 2012, for reconsideration
of our Decision mailed March 29, 2012 (hereinafter “Decision”) with respect
to claims 1-3 and 5-23 (Request 1).
The Decision affirmed the Examiner’s rejections of claims 1, 3, 5, 8,
11, 13, 14, 16, 18, and 21-23 under 35 U.S.C. § 103(a) as being unpatentable
over Greaves in view of Remboski; claims 6, 9, 12, 15, 17, 19, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Greaves in view of Remboski
and Wolf; claims 7 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over Greaves in view of Remboski and Tomassetti; and claim 2 under 35
U.S.C. § 103(a) as being unpatentable over Greaves in view of Remboski
and Liang (Decision 7-8).
We have reconsidered our Decision of March 29, 2012 regarding
claims 1-3 and 5-23 in light of Appellants’ comments in the Request, and we
find Appellants have not identified any points misapprehended or
overlooked by the Board in our Decision therein. We decline to change our
Decision for the reasons discussed infra.

II. ISSUES
We address the following contentions raised by Appellants in the
Request:
1. Appellants contend that “the claims do not recite ‘a first slave
node transmitting data’” and that “claim 1 defines the ‘port’ and as defined
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in the claim is not simply a broad interpretation of ‘the identity of the port of
the first slave node,’ as defined by the Board” (Request 1). In particular,
Appellants contend that “the second port in claim 1 cannot be the port on
which data was received, because claim 1 clearly requires: interconnecting a
master node and at least one slave node by unidirectional data connections”
(Request 4).
2. Appellants argue that although the Examiner and the Board find
that Appellants’ argument is not commensurate with the scope of the claim
in that “claim 1 does recite ‘adapting, by said slave node, the data in
dependence on an identity of said second port;’ and ‘slave node including a
second port adapted for connecting to a second immediately succeeding
node’” (Request 5). Appellants assert further that the Board has provided
“[n]o evidence or explanation is provided that [A]ppellants’ interpretation is
not commensurate in scope with the specific language of claim 1” (id.).
3. Appellants further contend that “there is no reasoning, evidence
or explanation as to how one of ordinary skill in the art would transition
from Greaves[’] teaching of appending the command cell with the port ID of
the port at which the command cell was received at, to … ‘adapting, by said
slave node, the data in dependence on an identity of said second port’”
(Request 6).
4. Appellants finally argue that “[t]he Board failed to address
[c]laims 22 and 23” (Request 7, emphasis removed); “[c]laims 6, 9, 12, 15,
17, 19 and 20” (Request 8, emphasis removed); and “[c]laim 2” (Request 9,
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emphasis removed), adding three new arguments that were not made in the
Appeal Brief (Request 7-9, App. Br. 12).
As to Appellants’ contentions 1 and 3, the issue we address on this
Request is whether Appellants have identified that the Board has misapplied
the relevant law regarding claim interpretation and misapprehended the
Appellants’ argument by finding that the combination of Greaves and
Remboski at least suggests “adapting, by said slave node, the data in
dependence on an identity” as recited in claim 1 and similarly recited in
claims.
As to Appellants’ contention 2, the issue we address on this Request is
whether the Board has adequately supported a finding that Appellants’
argument is not commensurate in scope with the claims.
As to Appellants’ contention 4, the issue we address on this Request is
whether Appellants may add new arguments in a Request for Rehearing.

III. ANALYSIS
As to Appellants’ contention 2, Appellants admit that the claim does
not include “‘identifying the second port which is connected to a second
immediately succeeding node’” (Request 5, quoting App. Br. 8). In
particular, as set forth in our Decision, we have found that the claim does not
recite “‘identifying the second port which is connected to a second
immediately succeeding node’” or “‘identifying the port from which the data
can be read’” as Appellants contend (Decision 5, quoting App. Br. 8).
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The burden is on Appellants to overcome the prima facie case with
objective evidence commensurate in scope with the claims. In re Lindner,
457 F.2d 506, 508 (CCPA 1972) (“It is well established that the objective
evidence … must be commensurate in scope with the claims”).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). However, we will not read limitations from the Specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). That is, in
our Decision, we have given “adapting, by said slave node, the data in
dependence on an identity of said second port” (claim 1) its broadest
reasonable interpretation as modifying the data based upon the identity of
the second port, consistent with the Specification and the claim. Therefore,
we have not read “identifying the second port which is connected to a
second immediately succeeding node” or “identifying the port from which
the data can be read” into the claim as Appellants argue (Decision 5; App.
Br. 8).
As to Appellants’ contention 4, contrary to Appellants’ contention that
we “failed to address claims [2, 6, 9, 12, 15, 17, 19, 20, 22, and 23]”
(Request 7-9), as set forth in our Decision, dependent claims 2, 6, 9, 12, 15,
17, 19, 20, 22, and 23 fall with claim 1 (Decision 7). In fact, in the Appeal
Brief, Appellants argue claims 2, 6, 9, 12, 15, 17, 19 and 20 together as a
group (App. Br. 12 and 13). Further, regarding claims 22 and 23, Appellants
provide no separate argument from those of claim 1 (App. Br. 12).
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As to the new arguments raised by Appellants in the Request for
Rehearing, we direct Appellants to page 4 of the Decision:
Only those arguments actually made by the Appellants
have been considered in this decision. Arguments which the
Appellants 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) (2008) (emphasis added).

In particular, although Appellants additionally contend that “Examiner
has not, presented a ‘convincing line of reasoning’ as to why one of ordinary
skill in the art would have found the claimed feature [of claims 22 and 23] to
have been obvious” (Request 8), “none of the references even suggest the
possibility of combining HDMI with ATM networks” (Request 8) and “none
of the references suggest if the slave node is not connected to an
immediately preceding node” (Request 9), we note that these arguments
could have been raised in the Appeal Brief. That is, our Decision and the
Examiner’s Answer contain the same findings as those set forth in the Final
Rejection and, thus, do not necessitate these new arguments by Appellants.
It is inappropriate for Appellants to discuss for the first time in a Request for
Rehearing matters that could have been raised in the Appeal Brief. “The
failure to raise all issues and arguments diligently, in a timely fashion, has
consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision). Cf. Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 973
n.* (Fed. Cir. 1986) and McBride v. Merrell Dow and Pharms., Inc., 800
F.2d 1208, 1211 (D.C. Cir. 1986).
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As to Appellants’ contentions 1 and 3, as set forth in our Decision,
“[w]e find that the combination of Greaves and Remboski at least suggests
providing ‘adapting, by said slave node, the data in dependence on an
identity of said second port’” (Decision 7, emphasis added). Further, as set
forth in our Decision, “we find that Appellants have not shown that the
Examiner erred in rejecting claim 1” (id.). Accordingly, contrary to
Appellants’ contention that the Board erred in finding what “the issue turns
upon” (Request 1), we indeed have considered all claimed features and have
found no error in the Examiner’s finding of unpatentability over Greaves
and Remboski (Decision 6-7). That is, though we have identified the
dispositive issue to address in the Decision (Decision 3-4), we nevertheless
have not limited the claim by the dispositive issue; rather we considered all
claimed features (Decision 6-7).
In particular, as noted supra, we have given “adapting, by said slave
node, the data in dependence on an identity of said second port” (claim 1) its
broadest reasonable interpretation as modifying the data based upon the
identity of the second port, consistent with the Specification.
Claim 1 does not place any limitation on what “unidirectional data
connection” means, includes, or represents other than it describes the type of
connection between a master node and at least one slave node. The
Specification is silent as to the definition for the term. Thus, we have given
“unidirectional data connection” (claim 1) its broadest reasonable
interpretation as a data coupling that provides data in one direction, as
consistent with the Specification and as specifically defined in claim 1.
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Although claim 1 recites a “unidirectional data connection,” we note
that this type of connection only refers to a coupling between a master node
and at least one slave node. We note that the claim does not recite that the
connection between “a slave node” and “an immediately preceding node” is
a “unidirectional data connection.” Furthermore, we note that the claim does
not recite that the connection between the “slave node” and “second
immediately succeeding node” is a “unidirectional data connection” as
Appellants contend (Request 4).
As Appellants agree, “Greaves clearly describes appending the
command cell with the port ID of the port at which the command cell was
received at” (Request 6). In particular, as set forth in our Decision, we have
found that Greaves discloses that “when a node 324 receives the command
cell (420 and 430) at ‘PORT3,’ the node 324 appends the port ID (‘PORT3’)
onto the command cell prior to sending the command cell to the next port,
‘PORT4’ of node 322” (Decision 6). Therefore, we have found that “that
each node in Greaves adapts the data based upon the identity of its port”
(id.).
In addition, as set forth in our Decision, we have found that
“Remboski discloses an arbitration field may be adapted to contain port
identifiers which identify the ports associated with the network elements
from which the data packet has traversed” (Decision 7).
Although both Greaves and Remboski adapt the data based upon the
identity of the port in which they receive the data and not upon the port in
which they transmit the data to an “immediately succeeding node” (claim 1),
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we have found (as set forth in our Decision), that “the combination of
Greaves and Remboski at least suggests providing ‘adapting, by said slave
node, the data in dependence on an identity of said second port’ [the identity
of the port it transmits data upon], as specifically required by claim 1”
(Decision 7, emphasis added).
Thus, we do not agree that we misapplied the relevant law regarding
claim interpretation and misapprehended the Appellants’ argument by
finding that the combination of Greaves and Remboski at least suggests
“adapting, by said slave node, the data in dependence on an identity of said
second port” and by finding that independent claims 3, 5, and 16 and claims
2, 6-15, and 17-23, depending from claims 1, 3, 5, and 16, fall with claim 1
in our Decision. Accordingly, Appellants’ Request does not persuade us to
modify our Decision. Therefore, we find Appellants arguments unavailing.

IV. CONCLUSION
We have carefully considered the arguments raised by Appellants in
the Request for Rehearing, but none of these arguments are persuasive that
our original Decision was in error. We are still of the view that the
invention set forth in claims 1-3 and 5-23 is unpatentable over the applied
prior art based on the record before us in the original appeal. This Decision
on Appellants’ Request for Rehearing is deemed to incorporate our earlier
Decision (mailed March 29, 2012) by reference. See 37 C.F.R. §
41.52(a)(1).

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V. DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision of March 29, 2012, but we deny the request with
respect to making any changes therein.

REHEARING DENIED

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