Jared Richard et al.

Patent Trials and Appeals Board

Jan 13, 2020

13910743 - (D) (P.T.A.B. Jan. 13, 2020)

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.
13/910,743 06/05/2013 Jared RICHARD 20130134-01 5899
126149 7590 01/13/2020
Keysight Technologies, Inc.
C/O CPA Global
900 Second Avenue South
Suite 600
Minneapolis, MN 55402
EXAMINER
ZAMAN, FAISAL M
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
01/13/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
keysightdocketing@cpaglobal.com
notice.legal@keysight.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARED RICHARD, KUEN YEW LAM, CHRIS R. JACOBSON,
and JAMES BENSON
Appeal 2018-006834
Application 13/910,743
Technology Center 2100
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Keysight Technologies,
Inc., appeals from the Examiner’s decision to reject claims 1–20 (Final Act.
1). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Keysight
Technologies, Inc. (Appeal Br. 3).
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Application 13/910,743

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CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to an expansion of
PCI-E compatible chassis. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A chassis, comprising:
a backplane comprising a switch fabric compatible with
peripheral component interconnect express (PCI-E) and
configured to support communication between a plurality of
module slots;
a module slot compatible with PCI-E and disposed on the
backplane;
a cavity disposed adjacent to the module slot and having a
width greater than or equal to a width of the module slot and a
height greater than or equal to a height of the module slot; and
a device connection interface located in the cavity and
configured to support connection of at least one PCI-E
compatible module to the switch fabric via the module slot; and
peripheral module disposed in the cavity, the peripheral
module being connected, in a peer-to-peer fashion via the switch
fabric, to an instrumentation module.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Phan US 6,597,566 B1 July 22, 2003
Conway
Hood III
Chen
US 2004/0201956 A1
US 2006/0109636 A1
US 2010/0199011 A1
Oct. 14, 2004
May 25, 2006
Aug. 05, 2010

Appellant’s Admitted Prior Art (“AAPA”)
REJECTIONS
Claims 1–6, 8–15, and 18–20 are rejected under 35 U.S.C. § 103 as
unpatentable over AAPA, Hood, and Conway (Final Act. 2).
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Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
AAPA, Hood, Conway, and Chen (id. at 8).
Claims 16 and 17 are rejected under 35 U.S.C. § 103 as unpatentable
over AAPA, Hood, Conway, and Phan (id. at 9).

We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant 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)(iv)).
OPINION
35 U.S.C. § 103(a): Claims 1–6, 8–15, and 18–20
Appellant contends its invention, as recited in claims 1–6, 8–15, and
18–20, is not obvious over AAPA, Hood, and Conway (App. Br. 5–7). The
issue presented by the arguments is whether the combined references teach
or suggest “a peripheral module disposed in the cavity, the peripheral
module being connected, in a peer-to-peer fashion via the switch fabric, to
an instrumentation module,” as recited in claim 1.

ANALYSIS
The Examiner relies on AAPA and Hood to teach all of the limitations
except “a peripheral module being connected, in a peer-to-peer fashion via a
switch fabric to an instrumentation module” for which Conway is relied
upon as teaching (Final Act. 4 (citations omitted)).
Conway teaches chassis 100, which may be VXI, VME, Compact
PCI, or PXI type, comprises a housing configured to define a plurality of
slots (Conway ¶ 6; Final Act. 4). Cards 102A, 102B, and 102C physically
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connect with a chassis backplane “comprised in the housing and . . . adapted
for transmitting electrical signals” (Conway ¶ 6; Final Act. 4). The
Examiner relies on card 102A to teach a peripheral module, card 102B to
teach an instrumentation module, and chassis 100 backplane to teach the
peer-to-peer connection via a switch fabric (Final Act. 4).
The Examiner further finds Conway teaches an instrumentation
module and specifically, combines module 360 (id.) which includes “PXI
instrumentation module 300B (which) may be connected to a card of cPCI
[paragraph 0006] or PCI Express type . . . on riser card 300A to the
peripheral module 102A via the chassis backplane” (Conway ¶ 22).
Appellant argues “according to Conway, a PXI Riser Card may work
with the interface as described in an application that refers to a switch
fabric”; however, Appellant contends, Conway does not disclose or suggest
“a peer-to-peer connection via the switch fabric, to an instrumentation
module” (App. Br. 6). According to Appellant, Conway has “no description
of any two cards of Fig. 1 (assuming arguendo that the cards of Fig. 1 are
peers), but rather of one card being adapted to work with an interface” (id.).
The Examiner finds Conway discloses chassis 100 contains PCI
Express Backplane (Ans. 2–3). We agree. Conway teaches a PCI Express
backplane and the backplane using a PCI communication protocol (see, e.g.,
Conway ¶ 22).
The Examiner then determines an ordinarily skilled artisan “would
recognize the chassis backplane (which contains a PCI Express bus) to be
equivalent to the claimed ‘switch fabric’” in light of Conway’s teaching and
in light of the AAPA which “expressly teaches a ‘switch fabric’” (Ans. 3
(citing Spec. ¶ 4)).
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Appellant argues Conway only once refers to a “chassis backplane,”
in paragraph 6, but argues Conway does not teach or suggest the chassis
being a switch fabric (App. Br. 7 (citing Conway ¶ 6)). We are not
persuaded. Initially, Conway teaches an exemplary chassis physically
connecting with a chassis backplane (Conway ¶ 6) and that the backplane is
a PCI Express backplane that may use a PCI communication protocol (id.
¶ 22). Additionally, we note the Examiner relies on AAPA and Hunt to
teach the “backplane comprising a switch fabric” (Final Act. 3). Thus,
Appellant is arguing the references individually while the Examiner is
relying on the combination of references. Conway must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole (see In re Merck & Co., Inc., 800 F.2d 1091, 1097(Fed. Cir. 1986)
(one cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references)).
Appellant’s further argument that “there is no link [in Conway]
presented to this noted backplane, and the chassis backplane of paragraph
[0006]” (App. Br. 7) also is not persuasive. Specifically, Appellant has not
persuaded us an ordinarily skilled artisan would not understand how the
chassis and backplane of Conway interact. A skilled artisan is “a person of
ordinary creativity, not an automaton” (see KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 420–21 (2007)). Here, Appellant has not presented sufficient
evidence or argument to persuade us connecting the PCI Express backplane
of paragraph 22 to the chassis of paragraph 6 would have been “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art” (see Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)).
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Additionally, Appellant’s argument that the Examiner’s reliance on
AAPA to teach “switch fabric” “would constitute a new ground[ ] of
rejection” (Reply Br. 6) is not persuasive.2 The Examiner clearly relied on
AAPA to teach the switch fabric (Final Act. 3).
Appellant further argues Conway provides no disclosure or
description that a peripheral module is “connected, in a peer-to-peer fashion
via the switch fabric, to an instrumentation module” and in particular,
Conway does not teach card 360 is an instrumentation module (App. Br. 7).
Although Appellant admits Conway teaches “an apparatus for coupling a
first module 300A [(which may be an adapter card,)] to a second module
300B [(which may be a Legacy PXI Card,)] to form a combined module
360,” according to Appellant, the Examiner “posits no explanation how the
combined module provides a instrumentation module, as opposed, for
example, to a non-instrumentation module” (id.).
We are not persuaded. Conway describes “different card formats as
defined by . . . PXI specifications” (Conway ¶ 8). Moreover, Conway
teaches a first module may be “an adapter card such as, but not limited to a
PXI Riser Card with an incorporated PCI Express to PCI Bridge” and the

2 Our review of the record indicates that Appellant did not file a petition
under 37 C.F.R. § 1.181(a) and 37 C.F.R. § 41.40 within two months from
the mailing of the Examiner’s Answer requesting that a ground of rejection
set forth in the Answer be designated as a new ground of rejection (see
MPEP § 1207.03). Therefore, Appellant has waived the allegation that the
Examiner’s Answer contains a new ground of rejection “mandating
reopening of prosecution” (Reply Br. 6) because Appellant did not file a
petition under 37 C.F.R. § 1.181(a) and 37 C.F.R. § 41.40 within two
months from the mailing of the Examiner’s Answer.

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second module may be a Legacy PXI Card (id. ¶¶ 22, 23). Thus, even if we
relied on the combined module 360, Conway still teaches an instrumentation
module –– it is a Legacy PXI Card with further technology to convert it to
the protocol used by the PCI Express backplane (id. ¶ 22). We further note
the Specification does not define explicitly “instrumentation module.”
Conway, however, describes “hardware interface options currently available
for instrumentation system can be categorized into various types, including .
. . Peripheral Component Interconnect (PCI) Extension for Instrumentation
(PXI) bus instruments” (id. ¶ 3).
Appellant argues Conway does not disclose or suggest “a peer-to-peer
connection via the switch fabric, to an instrumentation module” (App. Br. 6).
According to Appellant’s Conway does not use “the term ‘peer’ let alone
‘peer-to-peer’ connection disclosed in Conway” (Reply Br. 4). Appellant
admits:
As is known, the PCI Express peer-to-peer communication
(P2P) is a part of the PCI Express specification and enables
regular PCI Express devices to establish direct data transfers
without the need to use main memory as a temporary storage or
use of the CPU for moving data. (See, for example
https://www.dolphinics.com/download/WHITEPAPERS/
Dolphin_Express_IX_Peer_to_Peer_whitepaper.pdf
(id. at 4–5).3 Conway describes the backplane is a PCI-Express backplane
and the modules are PCI compatible (Conway ¶¶ 6, 8, 22). Moreover, the
Examiner relies on the combination of AAPA and Hood to teach “a switch
fabric compatible with peripheral component interconnect express (PCI-E),”

3 We note this reference has a date of October 8, 2015 on its first page,
which is after the filing date of the application (June 5, 2013).
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“connection of at least one PCI-E compatible module to the switch fabric via
the module slot,” and “a peripheral module disposed in the cavity” (Final
Act. 3–4). Accordingly, we are not persuaded the combination of AAPA,
Hood, and Conway fails to teach “peripheral module disposed in the cavity,
the peripheral module being connected in a peer-to-peer fashion via the
switch fabric, to an instrumentation module,” as recited in claim 1.
Dependent claims 2–6, 8–15, and 18–20, are not separately argued;
thus, these claims fall with independent claim 1. Therefore, we sustain the
rejection of claims 1–6, 8–15, and 18–20 under 35 U.S.C. § 103(a) for
obviousness over AAPA, Hood, and Conway.

35 U.S.C. § 103(a): Claim 7
Appellant contends its invention as recited in claim 7 is not obvious
over AAPA, Hood, Conway, and Chen based on its dependence from claim
1 (App. Br. 7). For the reasons set forth above, we sustain the rejection of
claim 1; therefore, we sustain the rejection of claim 7 under 35 U.S.C.
§ 103(a) for obviousness over AAPA, Hood, Conway, and Chen.

35 U.S.C. § 103(a): Claims 16 and 17
Appellant contends its invention as recited in claims 16 and 17 are not
obvious over AAPA, Hood, Conway, and Phan based on their dependence
from claim 1 (App. Br. 8). For the reasons set forth above, we sustain the
rejection of claim 1; therefore, we sustain the rejection of claims 16 and 17
under 35 U.S.C. § 103(a) for obviousness over AAPA, Hood, Conway, and
Phan.

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DECISION
The rejection of claims 1–6, 8–15, and 18–20 under 35 U.S.C. § 103
as unpatentable over AAPA, Hood, and Conway is affirmed.
The rejection of claim 7 under 35 U.S.C. § 103 as unpatentable over
AAPA, Hood, Conway, and Chen is affirmed.
The rejection of claims 16 and 17 under 35 U.S.C. § 103 as
unpatentable over AAPA, Hood, Conway, and Phan is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–15,
18–20
103 AAPA, Hood,
Conway
1–6, 8–15,
18–20

7 103 AAPA, Hood,
Conway, Chen
7
16, 17 103 AAPA, Hood,
Conway, Phan
16, 17
Overall
Outcome
1–20

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (See 37 C.F.R.
§ 1.136(a)(1)(iv)).
AFFIRMED