Ex Parte Zerbe et al

Board of Patent Appeals and Interferences

Jul 16, 2012

11455252 (B.P.A.I. Jul. 16, 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.
11/455,252 06/15/2006 Jared Zerbe RA194.CIP1.C1.US 8534
38489 7590 07/17/2012
SILICON EDGE LAW GROUP, LLP
6601 KOLL CENTER PARKWAY
SUITE 245
PLEASANTON, CA 94566
EXAMINER
TORRES, JUAN A
ART UNIT PAPER NUMBER
2611
MAIL DATE DELIVERY MODE
07/17/2012 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 JARED ZERBE and CARL WERNER
____________

Appeal 2009-015022
Application 11/455,252
Technology Center 2600
____________

Before MARC S. HOFF, CARL W. WHITEHEAD, JR. and
GREGORY J. GONSALVES, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015022
Application 11/455,252

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 26-35 and 37-47. Appeal Brief 1. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
We reverse.

Introduction
The invention is directed to a computer implemented method,
apparatus, and computer usable program code for managing files. Appeal
Brief 2.

Exemplary Claim
Exemplary independent claim 26 under appeal reads as follows:
26. In a system in which a sending device sends a
signal to a receiving device, and in which the receiving device
is provided with a reference voltage, an improvement
comprising:

a voltage divider network having a plurality of
impedances to generate a divided voltage for use as the
reference voltage;

a control to adjust the reference voltage provided by the
voltage divider network;

wherein the control is adjusted in association with an
attenuation affecting the signal, such that the reference voltage
provided to the receiving device is varied with attenuation.

Appeal 2009-015022
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Rejections on Appeal1
Claims 26-35 and 37-47 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Answer 3-4.
Claims 26-35 and 37-47 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Answer 4-5.
Claims 26-35 and 37-47 stand rejected under 35 U.S.C. § 102 as being
anticipated by Appellants’ Admitted Prior Art (AAPA). Answer 5-11.

Issues on Appeal
1. Do claims 26-35 and 37-47 fail to comply with the written
restriction requirement under 35 U.S.C. §112 first paragraph?
2. Are claims 26-35 and 37-47 indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellant regards as
the invention as required under 35 U.S.C. §112 second paragraph?
3. Are claims 26-35 and 37-47 anticipated by the Appellants’
Admitted Prior Art (AAPA)?

1 Examiner expounds upon the objection of claims 26-25 and 37-39 (Answer
11-15); however, the objection of the claims is not before us. See, e.g.,
MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition . . . .”).

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ANALYSIS
35 U.S.C. § 112, first paragraph rejection
The Examiner finds that Appellants’ Specification fails to disclose
support for claim 26’s limitation that “the control is adjusted in association
with an attenuation affecting the signal, such that the reference voltage
provided to the receiving device is varied with attenuation.” Answer 3-4,
15-19. The Examiner’s findings are predicated on the Examiner’s
understanding of varying the reference voltage with attenuation. Answer 17.
“What means [sic] that ‘the reference voltage provided to the receiving
device is varied with attenuation’” [sic]? Id.
Appellants point to various paragraphs in the Specification where they
provide support for the claim limitation. Appeal Brief 6. In spite of the
Examiner’s efforts to define various terms employed within the claims and
Appellants’ Specification (Answer 18), we find Appellants’ arguments to be
persuasive. We find that Appellants’ Specification (paragraphs [0072]-
[0077]) provides sufficient support for the claim limitation.Therefore, we do
not sustain the Examiner’s rejection of independent claim 26 under 35
U.S.C.§ 112, first paragraph, as well as those claim dependent upon claim 26
not separately rejected.
Further, in regards to claims 40-44 and 45-47, as grouped by the
Examiner, the Examiner finds that Appellants’ Specification does not
provide support for the claim limitations “pulling the reference voltage down
in association with attenuation in sending the data to the recipient” (claim
40) and “adjust the reference voltage in association with attenuation” (claim
45) and references his rationale in regard to claim 26 for support for his
findings. Answer 19-21. However, Appellants indicate where the support is
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provided within their Specification (Appeal Brief 7-8). Thus, we find
Appellants’ Specification to provide sufficient support for the recited claim
limitations. Therefore. we do not sustain the Examiner’s rejection of claims
40-44 and 45-47 under 35 U.S.C. § 112, first paragraph.

35 U.S.C. § 112, second paragraph rejection
The Examiner finds that “it is not understood, including in view of the
specification, what the A]pplicants] are] trying to claim when is [sic]
claiming ‘the control is adjusted in association with an attenuation affecting
the signal such that the reference voltage provided to the receiving device is
varied with attenuation.’” Answer 22. The Examiner references his findings
in regard to claim 26’s purported failing to comply the written description
requirement for additional support for the indefiniteness rejection of claim
26. Answer 23. As stated above, we do not agree with the Examiner’s
findings in regard to claim 26.
Appellants argue that “the Examiner has slightly misquoted a portion
of the claim,” and that the claim actually states: “wherein the control is
adjusted in association with an attenuation affecting the signal, such that the
reference voltage provided to the receiving device is varied with
attenuation.” Appeal Brief 9. Appellants further argue that “i]t is not clear
what the Examiner’s difficulty is in understanding this clause.” Id. In spite
of the Examiner’s lengthy contentions (Answer 21-26) we agree with
Appellants. It is not clear to us why the Examiner is having difficulty
understanding the clause or the recited claim limitation. We do not agree
with the Examiner that claim 26 is indefinite. Further, we do not agree that
claims 40-45 and 45-47, as grouped by the Examiner (See Answer 24), are
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indefinite. Therefore, we do not sustain the Examiner’s rejection of claims
26-35 and 37-47 under 35 U.S.C. § 112, second paragraph.

35 U.S.C. § 102 rejection
The Examiner reproduces claim 26 with added emphasis on
particular claim limitations, as well as reproducing paragraphs
[0011], [0057] and [0058] of Appellants’ Specification (see
Answer 27-30). The Examiner finds that:
It is clear from figures] 4 and 5 that in a voltage
divider network having a plurality of impedances to
generate a divided voltage for use as the “reference
voltage”, controlling or pulling-down the VTERM voltage
inherently always adjust the reference voltage in a
proportional magnitude provided by the voltage divider
network. Therefore to one of ordinary skill in the art at the
time that the invention was made, a pull down of the
VTERM inherently forces in all cases a pull down of the
generated reference voltage.
Therefore, AAPA specifically discloses all these
limitations, and consequently, the rejection of claim 26 is
proper, therefore, the rejection of claim 26 is maintained.
Answer 30.
Appellants argue that “the Examiner has misconstrued the provisions
of their paragraph 11, and there is no ‘control to adjust the reference voltage’
in Appellants’ FIGS. 2-3 or paragraphs [0052-0057].” Appeal Brief 11.
Further, Appellants argue that paragraph [0011] indicates that equalization is
used to compensate for attenuation by adding high frequency components to
the main signal, and not to a “reference voltage” as the Examiner contends.
Appeal Brief 12. Appellants also argue, with respect to Figures. 2-3 and
paragraphs 0052]-[0057], that the “description simply does not describe or
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suggest any system or operation where a control signal is used to adjust a
reference voltage, much less in association with attenuation.” Id.
We find Appellants’ arguments to be persuasive. The Examiner
simply reproduces the paragraphs with underlined phrases from Appellants’
Specification without specific references to teachings that would anticipate
the claim. See Answer 27-30. In the absence of fact-finding by the
Examiner concerning the cited paragraphs, we are constrained to find that
AAPA does not anticipate the claimed invention. Therefore, we do not
sustain the Examiner’s anticipation rejection of claim 26 as well as those
claims that depend therefrom.
The Examiner finds that Appellants’ Specification anticipates the
claimed invention recited in claims 40 and 45. Answer 30, 32. As with
claim 26 supra, the Examiner cites paragraphs [0011] and [0057] in support
of anticipation. Answer 31-32. Appellants argue that the Examiner again
misconstrues paragraph 0011], and assert that the memory controllers that
the Examiner identifies as AAPA do not include a mechanism that adjusts a
reference voltage “in association with attenuation,” as claimed. Appeal
Brief 13-14. Again, we find Appellants’ arguments to be persuasive. We
once again find that the recited paragraphs fail to anticipate the claims.
Therefore, we do not sustain the Examiner’s anticipation rejection of claims
40 and 45, as well as those claims that depend therefrom.

DECISION
The rejections of claims 26-35 and 37-47 are reversed.

REVERSED
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