Jean-Marie Courteille et al.

Patent Trials and Appeals Board

Dec 22, 2020

2019005755 (P.T.A.B. Dec. 22, 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.
13/992,974 06/10/2013 Jean-Marie Courteille 4005/0506PUS1 6585
60601 7590 12/22/2020
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
MIAN, MOHAMMAD YOU A
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEAN-MARIE COURTEILLE and
FRANCOIS GUILLOT
____________________

Appeal 2019-005755
Application 13/992,974
Technology Center 2400
____________________

Before BRYAN F. MOORE, LARRY J. HUME, and BETH Z. SHAW,
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12, which constitute all the claims
pending in this application. Appeal Br. 6–10. We have jurisdiction under
35 U.S.C. § 6(b).

1 Throughout this Decision we have considered the Specification filed
June 10, 2013 (“Spec.”), the Final Rejection mailed May 30, 2018 (“Final
Act.”), the Appeal Brief filed January 28, 2019 (“Appeal Br.”), and the
Examiner’s Answer mailed May 14, 2019 (“Ans.”).
2 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 Sagem
Defense Securite. Appeal Br. 2.
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We affirm.
BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to
device for making multiple connections to a computer. Spec., 1:4–5.
Claim 1, reproduced below, is illustrative of the subject matter on appeal
(emphasis added to contested prior-art limitation):
1. A device for making multiple connections to a computer
unit, the device comprising:
at least one main connection provided with a connector
for connection to the computer unit and connected
directly via a switch module to a plurality of secondary
connections, each provided with an external connector
and together presenting an overall data rate equal to a
maximum data rate of the main connection, the switch
module being arranged to prevent direct interconnection
of the secondary connections there between.
Appeal Br. 11 (Claims App.).
REJECTIONS
Claims 1–5, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of US 5,469,5453, issued
Nov. 21, 1995 (“Vanbuskirk”), in view of US 2002/0181486 A1, published
Dec. 5, 2002 (“Cantwell”); and US 2008/0068997 A1, published
Mar. 20, 2008 (“Krause”). Final Act. 3–8.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Vanbuskirk, in view of Cartwell and

3 The Final Act. Refers to US 2008/0104485 which appears to be a
typographical error. Final Act. 4. US 2008/0104485 is the reference Lyakh
that is applied to claim 7–9. Final Act. 9–12.
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Krause, in further view of US 2005/0256975 A1, issued Nov. 17, 2005
(“Kaniz”). Final Act. 8–9.
Claim 7–8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Vanbuskirk, in view of Cartwell and
Krause, in further view of US 2008/0104485 A1, issued May 1, 2008
(“Lyakh”). Final Act. 9–11.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Vanbuskirk, in view of Cartwell,
Krause, and Lyakh in further view of US 2007 /0121559 A1, issued May 31,
2007 (“Xhafa”). Final Act. 11–12.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Vanbuskirk, in view of Cartwell, in
further view of US 6,633,998, issued Oct. 14, 2003 (“Lau”). Final
Act. 12–13.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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The Examiner concludes that claims 1–5, 10, and 11 would have been
obvious over the combination of Vanbuskirk, Cartwell, and Krause. Final
Act. 3–8. Specifically, the Examiner finds that Vanbuskirk teaches or
suggests a “switch module.”4 Id. at 4–5 (citing Vanbuskirk, 3:26–32). The
Examiner asserts that Vanbuskirk states “[s]everal of the serial
communication ports on the host adapter include switching means to enable
a high speed serial communication link CPU 10.” Ans. 4 (citing
Vanbuskirk, 3:28–32).
Appellant argues the combination of Vanbuskirk and Cantwell do not
teach or suggest “the switch module being arranged to prevent direct
interconnection of the secondary connections therebetween,” recited in
claim 1. Appeal Br. 6. Specifically, Appellant argues that Vanbuskirk, does
not disclose a “switch module.” Id. First, Appellant argues that the host
adapter operates as a translator and a multiplexer not as a switch. Id.
Second, Appellant quotes two blocks of text from Vanbuskirk and states that

4 We have decided the appeal before us., Should there be further prosecution
of these claims, the Examiner's attention is invited to the term “switch
module,” recited in claim 1, to determine whether claim 1 should be
interpreted under 35 U.S.C. § 112, ¶6, as a means plus function claim.
Compare Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed.
Cir. 2015) (“When a claim term lacks the word ‘means,’ the presumption
can be overcome and § 112, para. 6 will apply if the challenger demonstrates
that the claim term fails to ‘recite sufficiently definite structure’ or else
recites ‘function without reciting sufficient structure for performing that
function.’) (citations omitted) with Greenberg v. Ethicon Endo-Surgery, Inc.,
91 F.3d 1580, 1583 (Fed. Cir. 1996) (the fact that a particular mechanism—
here “detent mechanism”—is defined in functional terms is not sufficient to
convert a claim element containing that term into a ‘means for performing a
specified function’ within the meaning of section 112(6). Many devices take
their names from the functions they perform. The examples are innumerable,
such as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’”)
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the host adapter “is only a serial interface for a host computer in which it is
mounted.” Appeal. Br. 7–8. Thus, according to Appellant, “[s]uch an
arrangement is completely different from the mounting of a switch so that
one of ordinary skill in the art would not have considered a switch or switch
functions in the host adapter 18′.” Id. at 8.
Appellant’s arguments do not persuade us of reversible error in the
Examiner’s rejection. First, Vanbuskirk explicitly states the host adapter
includes “switching means.” Ans. 4 (citing Vanbuskirk, 3:28–32).
Additionally, Appellant has not explained sufficiently why a multiplexer
should not be found to be a “switch module,” as recited in claim 1, in the
broadest reasonable interpretation of “switch module.” See Appeal. Br. 6–9.
Finally, Appellant does not explain why a serial interface arrangement as in
Vanbuskirk would not be considered a switch given that Vanbuskirk
explicitly discloses a switch. See id. at 8. We, therefore, agree with the
Examiner that Vanbuskirk teaches or at least suggests a “switch module.”
Ans. 3–4.
The Examiner argues that Cantwell Figures 1 and 2 and paragraphs 16
and 17 describe “switch 28 . . . that provide[s] input to the multiplexer 30
[and] prevent[s] direct interconnection of the secondary connections
therebetween.” Ans. 5. Appellant argues that Cantwell alone, or in
combination with Vanbuskirk, does not teach or suggest “being arranged to
prevent direct interconnection of the secondary connections therebetween.”
Appeal Br. 7–9. Appellant faults the Examiner for terse language that
assumes, because Figures 1 and 2 do not show interconnections, that none
exist. Appeal Br. 7. Appellant argues that, although Figure 1 shows
multiplexer 12 and Figure 2 shows switch 28, a multiplexer/demultiplexer
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30, a multiplexer/demultiplexer 34 and a routing device 36, a multiplexer
(or, by implication, a demultiplexer) is not a switch. Id. Additionally,
Appellant argues that Cantwell does not explain the inner working of switch
28 and is “silent” on interconnection such that it cannot be said that Cantwell
teaches or suggest preventing interconnection. Appellant also argues that
“the device of Cantwell functions with a classical Ethernet switch so that the
switch 26 does not prohibit interconnection.” Id. at 7.
Appellant’s arguments do not persuade us of reversible error in the
Examiner’s rejection. First, Cantwell explicitly discloses a switch 28.
Ans. 4–5 (citing Cantwell, Fig. 2). Additionally, Appellant’s arguments are
presented without explaining sufficiently the basis for its assertions. See
Appeal. Br. 6–9. In our view, the Examiner has made a reasonable finding
that a demultiplexer/multiplexer does not ordinarily allow interconnections.
Ans. 5. See In re Best, 562 F.2d 1252, 1254–56 (CCPA 1977). Thus,
Appellant has not explained sufficiently why using a demultiplexer/
multiplexer that does not allow interconnection should not be found to
“prevent direct interconnection of the secondary connections therebetween,”
as recited in claim 1, in the broadest reasonable interpretation of that
limitation. See Appeal. Br. 6–9. Specifically, Appellant has not shown
sufficiently that a demultiplexer/multiplexer or a “classical Ethernet switch”
would allow interconnection of their connections. See id. at 8. We,
therefore, agree with the Examiner that Vanbuskirk teaches or at least
suggests a “switch module.” Ans. 3–4.
Appellant also suggests that none the various combinations of
Vanbuskirk and Cantwell that one of ordinary skill might make would meet
the claim limitation. Appeal Br. 7. Appellant’s argument is based on the
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assertion that a demultiplexer/multiplexer is not a switch, as discussed
above. Additionally, Appellant has not demonstrated that the Examiner’s
specific proffered combination of references would have been “uniquely
challenging or difficult for one of ordinary skill in the art.” See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Nor has Appellant provided objective
evidence of secondary considerations which our reviewing court guides
“operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak
Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). (See also
App. Br. 35, “IX. Evidence Appendix None.”).
For the reasons above, we are not persuaded by Appellant’s
arguments that the Examiner’s rejection is in error with respect to the
limitation to “the switch module being arranged to prevent direct
interconnection of the secondary connections therebetween,” recited in
claim 1.”
Accordingly, we sustain the Examiner’s rejection of claim 1 as
obvious over the combination of Vanbuskirk, Cantwell, and Krause. We
also sustain the rejection of claims 2–5, 10, and 11, which are not argued
separately (see Appeal Br. 6–9), as obvious over the combination of
Vanbuskirk, Cantwell, and Krause. We also sustain the rejection of claims
6–9, and 12, which are also not argued separately (see Appeal Br. 9–10), as
obvious over other combinations.
CONCLUSION
We affirm the Examiner’s rejection of claims 1–12 under 35 U.S.C.
§ 103(a).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1–3, 5–9,
11–13
103(a) Vanbuskirk, Cantwell,
and Krause
1–3, 5–9,
11–13

6 103(a) Vanbuskirk, Cantwell,
Krause, and Kaniz
6
7, 8 103(a) Vanbuskirk, Cantwell,
Krause, and Lyakh
7, 8
9 103(a) Vanbuskirk, Cantwell,
Krause, Lyakh, and Xhafa
9
12 103(a) Vanbuskirk, Cantwell,
and Lau
12
Overall
Outcome
1–12
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). See
37 C.F.R. § 41.50(f).
AFFIRMED