Ex Parte 6564275 et alDownload PDFPatent Trial and Appeal BoardSep 25, 201295000539 (P.T.A.B. Sep. 25, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/000,539 03/08/2010 6564275 72836.P035 7754 53720 7590 09/25/2012 Chen Yoshimura LLP Attention Ying Chen 333 W. El Camino Real, Suite 380 Sunnyvale, CA 94087 EXAMINER CHOI, WOO H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/25/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ BELKIN INTERNATIONAL, INC. & BELKIN, INC. Requester, Appellant, and Respondent v. Patent of ATEN INTERNATIONAL CO., LTD Patent Owner, Appellant, and Respondent ____________________ Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 Technology Center 3900 ____________ Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and THOMAS L. GIANNETTI, Administrative Patent Judges. BLANKENSHIP, Administrative Patent Judge DECISION ON APPEAL STATEMENT OF THE CASE Owner appeals under 35 U.S.C. § 134(b) from the final decision of the Examiner adverse to the patentability of claims 1-4, 6, 8-12, 32-44, and 52- App Reex Paten 68. the E We h univ inven resis eal 2012-0 amination t US 6,56 Requester xaminer f ave jurisd We affir The '275 ersal seria Figure 2 Figure 2 tion. The tor R1, a c 08960 Control 9 4,275 B1 appeals un avorable t iction und m-in-part. patent is l bus (USB of the pat depicts a circuit in apacitor C 5/000,539 der 35 U. o the paten er 35 U.S. In directed to ) interface ent is repro detailed ci cludes a tr 1, and a sw 2 S.C. § 134 tability of C. § 315. vention an electro . '275 pat duced bel rcuit of the igger signa itch SW1 (c) from th claims 5, nic switch ent Abstra ow. first emb l generato ), a contro e final de 13-31, and ing device ct. odiment o r 11 (com l signal ge cision of 45-51. for a f the prising a nerator 12 Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 3 (D flip-flop), and a connector 13 (multiplexor). When the connector 13 receives the control signal outputted from the control signal generator 12, the connector 13 will connect the third USB interface 16 with the first USB interface 14 or the second USB interface 15. '275 patent col. 2, l. 29 - col. 3, l. 36. Claims Claims 1-6 and 8-12 are original patent claims, or original patent claims proposed to be amended. Patent claim 7 is not subject to reexamination. Claims 13-68 are proposed new claims. Claim 1 is representative. 1. (Original) An electronic switching device for a universal serial bus (USB) interface, comprising a trigger signal generator, a control signal generator, and a connector, wherein: the trigger signal generator has an output to be connected with an input of the control signal generator, and a switch to output a trigger signal to the control signal generator when a user enables the switch; the trigger signal generator comprises a resistor, a capacitor, and a switch, the resistor and the capacitor being serially connected between a power supply and a ground one end of the switch being connected to the ground, and the other end of the switch being connected to where the resistor and the capacitor are connected, such that when a user enables the switch, the switch will generate a pulse signal to be used as a trigger signal for outputting to the control signal generator; the control signal generator has an input to be connected with an output of the trigger signal generator, and an output to be connected with an input of the connector, for receiving the Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 4 trigger signal outputted from the trigger signal generator, processing the trigger signal, and then outputting a control signal to the connector; and the connector has an input to be connected with each universal serial bus (USB) interface of at least two electronic devices, and an output to be connected with a universal serial bus (USB) interface of another electronic device, such that when the connector receives the control signal outputted from the control signal generator, the connector will connect related universal serial bus (USB) interfaces according to the control signal. Prior Art Smithson US 4,539,564 Sep. 3, 1985 Liang US 5,928,341 July 27, 1999 Osakada US 6,308,239 B1 Oct. 23, 2001 Kim KR 0004527 June 25, 1994 Jung KR 0008539 June 28, 1996 Paul Horowitz and Winfield Hill, The Art of Electronics, The Press Syndicate University of Cambridge, 2d ed. (1989) (hereinafter “Horowitz”). Rudolf F. Graf, Encyclopedia of Electronic Circuits, Vol. 3 (1991) (hereinafter “Graf”). Universal Serial Bus Specification, Verison 1.0, Compaq Computer Corporation et al., (1996) (hereinafter “USB”). Owner’s Contentions Owner contends that the Examiner erred in entering the following grounds of rejections against claims 1-4, 6, 8-12, 32-44, and 52-68: Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 5 I. Claims 32-44 and 56-68 are rejected under 35 U.S.C. § 314(a) as enlarging the scope of the claims of the patent;1 II. Claims 52-55 are rejected under 35 U.S.C. § 112, first paragraph, as lacking adequate written description; III. Claims 1-4 and 8-12 are rejected over prior art combinations that include Osakada: (i) Claim 1 is rejected under 35 U.S.C. § 103(a) over Osakada and Graf; (ii) Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) over Osakada and Kim; (iii) Claims 2 and 4 are rejected under 35 U.S.C. § 103(a) over Osakada and Liang; (iv) Claims 3, 8, and 9 are rejected under 35 U.S.C. § 103(a) over Osakada and Jung; (v) Claim 10 is rejected under 35 U.S.C. § 103(a) over Osakada and Horowitz; (vi) Claim 11 is rejected under 35 U.S.C. § 103(a) over Osakada, Jung, and USB; and (vii) Claim 12 is rejected under 35 U.S.C. § 103(a) over Osakada, Jung, and Horowitz; and IV. Claim 6 is rejected under 35 U.S.C. § 103(a) over Smithson and USB. 1 The Examiner and both parties refer to § 305, which is the corresponding statute for ex parte reexamination. Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 6 Requester’s Contentions Requester contends that the Examiner erred in not entering grounds of rejection against claims 5, 13-31, and 45-51. ANALYSIS I. 35 U.S.C. § 314(a) The Examiner rejects new claims 32-44 and 56-68 for impermissible broadening, as set forth in the Action Closing Prosecution mailed November 19, 2010 (ACP). Independent claims 32 and 56 are impermissibly broadened. Both claims 32 and 56 duplicate the limitations of original claim 5, but drop the requirements that the multiplexors be “parallely [sic; parallelly] connected for decreasing the internal resistance in the connector”, and in addition claim 56 specifically drops the requirement that the multiplexors be “identical”. As this is a broader scope than the original claim, these claims are therefore rejected under 35 U.S.C. 305 [sic; 35 U.S.C. § 314(a)]. Claims 33-44 and 57-68 inherit this rejection through dependency. ACP 14. Owner does not contest the Examiner’s determination that proposed new claims 32 and 56 are broader than original claim 5 (or any original patent claim). We therefore sustain the rejection of claims 32 and 56 under 35 U.S.C. § 314(a). Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 7 Owner submits, however, that each of dependent claims 33-44 and 57- 68 adds limitations such that each dependent claim is narrower than an original patent claim. Owner’s App. Br. 46-56. The Examiner has not met the initial burden of setting forth a case which demonstrates that the proposed dependent claims enlarge the scope of the patent claims. The dependent claims cannot “inherit” the rejection of the respective independent claim through “dependency” because the dependent claims add limitations and are thus narrower than base claim 32 or base claim 56. The mere fact that the dependent claims depend from impermissibly broad base claims does not establish that any of the dependent claims are broader than each and every patent claim. Because the Examiner’s rejection does not set forth a satisfactory basis for the conclusion that dependent claims 33-44 and 57-68 enlarge the scope of the claims of the patent, and Owner does not admit or acknowledge that any dependent claim is broader than any patent claim, we cannot sustain the rejection of dependent claims 33-44 and 57-68 under 35 U.S.C. § 314(a).2 II. 35 U.S.C. § 112, first paragraph To comply with the “written description” requirement of 35 U.S.C. § 112, first paragraph, an applicant must convey with reasonable clarity to 2 “If an amended base patent claim or a new base claim is rejected, a claim dependent thereon should be objected to if it is otherwise patentable, and a requirement should be made for rewriting the dependent claim in independent form.” Manual of Patent Examining Procedure (MPEP) § 2660.03, Eighth Ed., Rev. 8, July 2010 (emphasis changed from original). The Examiner thus should have considered the dependent claims separately, and rejected or objected to each dependent claim as appropriate. Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 8 those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the “written description” inquiry, whatever is now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). One shows “possession” by descriptive means such as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). It is not sufficient for purposes of the written description requirement that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose. Id. “[T]he hallmark of written description is disclosure. Thus, ‘possession as shown in the disclosure’ is a more complete formulation. . . “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The invention claimed does not have to be described in ipsis verbis in order to satisfy the written description requirement. Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). However, written description support should not be confused with the question of what would have been obvious to the artisan. Whether one skilled in the art would find the instantly claimed invention obvious in view of the disclosure is not an issue in the “written description” inquiry. In re Barker, 559 F.2d 588, 593 (CCPA 1977). A description which renders obvious the invention Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 9 for which the benefit of an earlier date is sought is not sufficient. Lockwood, 107 F.3d at 572. The Examiner rejects new claims 52 through 55 under 35 U.S.C. § 112, first paragraph, because of a lack of explanation of support for the limitations of “delay signal generator” and “enable signal generator” in the claims. ACP 15. Owner points to disclosure in the written description and drawings that Owner deems to provide support for each limitation of claims 52 through 55. Owner’s App. Br. 57-65. Requester, however, submits that the combination of an enable signal generator and a delay signal generator is not found in the '275 patent, such that possession of an embodiment combining the elements has not been demonstrated. Requester’s Respond. Br. 29. Owner elected not to file a rebuttal brief, 3 so we do not have Owner’s views on how possession of the “combination” might be conveyed by the '275 patent disclosure. The '275 patent describes a “first embodiment” (Figs. 1 and 2). '275 patent col. 1, ll. 44-47. The drawings further depict the “first embodiment” with “a delay signal generator” added (Figs. 5 and 6) and with an “enable signal generator” added (Figs. 9 and 10). '275 patent col. 1, ll. 53-58, 65-67; col. 2, ll. 1-3. The patent further describes the depicted embodiments at column 4, lines 21 through 67 (Figs. 5 and 6) and at column 5, lines 10 through 43 (Figs. 9 and 10). Original, independent patent claim 6 (with 3 See 37 C.F.R. § 41.71 (b)(1) (“The rebuttal brief of the owner may be directed to the examiner’s answer and/or any respondent brief.”). Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 10 dependent claim 7) recites a “delay signal generator.” Original, independent patent claim 10 recites an “enable signal generator.” Notably, we find no adequate written description of an embodiment that combines the features of a “delay signal generator” 17 (Figs. 5 and 6) with that of an “enable signal generator” 19 (Figs. 9 and 10). Because we do not find descriptive means such as words, structures, figures, diagrams, and formulas that fully set forth the respective invention of each of claims 52 through 55, we sustain the § 112, first paragraph rejection of these claims. III. Examiner’s Prior Art Rejections Findings of Fact -- Osakada Figure 1 of Osakada is reproduced below. App Reex Paten conf may switc eal 2012-0 amination t US 6,56 Osakada iguration o be effecte hing com 08960 Control 9 4,275 B1 ’s Figure f a USB h d by two d mand and 5/000,539 1 is a block ost selecto ifferent m the switch 11 diagram r. Osakad ethods. U ing contro showing a a col. 3, ll SB hosts 1 l section 1 hardware . 49-51. S 03 may se 10 interpr witching nd out a ets the App Reex Paten comm oper the s eal 2012-0 amination t US 6,56 and throu ate manua Figure 2 Osakada witching c 08960 Control 9 4,275 B1 gh the US l change-o of Osakad ’s Figure 2 ontrol sec 5/000,539 B bus inte ver switch a is repro is said to tion 110. 12 rface 107 111. Col duced belo be a flow Osakada c . Alternat . 4, l. 66 - w. chart show ol. 5, ll. 13 ively, a us col. 5, l. 1 ing the op -14. er may 2. eration of Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 13 After system power is switched on, at step 202 (Fig. 2), an arbitrary one of valid USB hosts 103 is selected by the switching section 109. If a switching command is issued by a USB host 103 and detected at step 204, the process proceeds to step 206. If there is not a switching command from a USB host 103 and the user issues a manual switching command, the process proceeds from step 205 to step 206. If the USB host to be switched is properly connected, switching section 109 is switched according to the switching control command (step 207). After switching in step 207, the process returns to step 203 rather than step 204, because switching of the USB hosts 103 requires initialization of the USB devices 104 (and USB bus interface 107). Osakada col. 5, ll. 13-46.4 Claim 1 -- § 103(a) Osakada and Graf The Examiner adopts Requester’s proposed rejection of claim 1 as set forth at pages 89 through 94 of the Request for Reexamination. ACP 4-5. The rejection is based in part on combining the manual change-over switch 111 of Osakada with Graf’s debounce circuit because the problem of switch chatter was well known, and Graf’s debounce circuit provides a well-known solution to the problem. Req. Reexam. 93. Osakada is deemed to teach a “trigger signal generator” (manual change-over switch 111) while Graf is 4 Osakada’s flowchart of Figure 2 contains an obvious error. No switching occurs after step 205 (“NO”) and step 206 (“NO”). We presume that flow control in those cases returns to step 204. If, as depicted, flow control were to return to step 203, when there is no switching to be performed the USB devices 104 and USB interface 107 would not be in the normal operating state (with data transfer between the host and devices), but would be in a constant state of initializing. Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 14 deemed to offer a simple “how to” construct the trigger signal generator to enhance system reliability. Id. Owner argues that Osakada fails to teach or suggest a control signal generator “for receiving the trigger signal outputted from the trigger signal generator, processing the trigger signal, and then outputting a control signal to the connector,” which is a deficiency not cured by Graf. Owner’s App. Br. 22. Owner acknowledges that changeover switch 111 selects the host, by signaling one of four options corresponding to hosts 103a to 103d, but contends that the manual signal does not select the USB devices (104a to 104c), so there is no need for the switching control section 110 to interpret the manual change-over signal. Id. at 21-22. However, as shown in Osakada’s Figure 2, there is no direct connection between manual changeover switch 111 and switching section 109. Further, the reference teaches, with respect to operation of the manual changeover switch 111, that switching control section 110 “performs priority control as to the switching control command issued from the USB hosts 103.” Osakada col. 5, ll. 9-12. We therefore find that Osakada teaches that switching control section 110 receives one or more signals from manual changeover switch 111, when the switch is actuated, for directing switching section 109 to select the indicated USB host. There is thus, contrary to Owner’s argument, a need for switching control section 110 to interpret the manual change-over signal. If the signal(s) from manual changeover switch 111 were not properly processed by switching control section 110, no switching would occur. Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 15 Owner also submits that even if Osakada and Graf were to be combined, the combination would not teach or suggest the “trigger signal generator” as recited in claim 1. We have already considered Owner’s basis for the argument, however, and found it untenable. According to Owner, Osakada’s manual changeover switch 111 generates the control signal itself, which merely needs to be selected and not processed by switching control section 110. Owner’s App. Br. 24. We find that Osakada’s switching control section 110 processes the signal from changeover switch 111, to the extent required by claim 1, as opposed to merely supplying “one of the signals from the output of change-over switch 111 to the switching section 109.” Id. at 23. If the changeover switch signal were “merely supplied” to the switching section 109, the changeover switch 111 would be directly connected to switching section 109. Moreover, even if Osakada’s changeover switch 111 supplies a different host selection signal for each host, such as four signals for four hosts (id. at 24), claim 1 does not distinguish over supplying two, three, four or more debounce circuits as taught by Graf for generating two, three, four or more different host selection signals. That is, claim 1 requires a “trigger signal generator,” but the claim does not preclude two or more “trigger signal generators.” Finally, we find Owner’s allegation (App. Br. 24) that the “debounce function of the Graf circuit does not come from the capacitor and 500k resistor illustrated in Graf, but rather from an ‘internal resistor’ included in the TTL inverter 74LS14” to be inapposite. Claim 1 requires a trigger signal generator comprising a resistor, a capacitor, and a switch as arranged in Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 16 Graf, but the claim does not preclude the trigger signal generator from further comprising a TTL inverter having an internal resistor. See Graf at 592, Fig. 99-2. In view of the evidence supporting the Examiner’s rejection and Owner’s arguments to the contrary, we are not persuaded that claim 1 has been rejected in error. We sustain the § 103(a) rejection of claim 1 over Osakada and Graf.5 Claims 1-4 and 8-12 -- § 103(a) Osakada and Additional Prior Art Owner’s remarks in the Appeal Brief that are purported to be in response to the § 103(a) rejections over Osakada and additional prior art combined with Osakada do not address the reasons that the Examiner found Requester’s arguments to be the more persuasive. See ACP 16-27. Accordingly, the remarks fail to demonstrate error in the Examiner’s adoption of the proposed rejections. Moreover, Owner has failed to respond to Requester’s arguments and evidence that are set forth in Requester’s Appeal Brief. Pertinent requirements of a Respondent’s brief are set forth below. § 41.68 Respondent’s brief. . . . (vii) Argument. A statement accepting or disputing the contentions of appellant with each of the issues presented by the appellant for review. If a contention of the 5 Moreoever, as discussed infra, Owner has not responded to Requester’s arguments and evidence in the briefs that further demonstrate unpatentability of the subject matter of claim 1 in view of Osakada and Graf. Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 17 appellant is disputed, the errors in appellant’s argument must be specified, stating the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on. Each issue must be treated under a separate heading. An argument may be made with each of the issues stated in the counterstatement of the issues, with each counter-stated issue being treated under a separate heading. 37 C.F.R. § 41.68(b)(1)(vii) (emphasis added). Finally, because Owner elected not to file a rebuttal brief (37 C.F.R. § 41.71), Owner has failed to respond to Requester’s arguments in response to Owner’s Appeal Brief, which are set forth in Requester’s Respondent Brief, and which we find to be persuasive. Thus, Owner had the opportunity (and duty) to provide arguments with respect to why any of Requester’s positions in Requester’s briefs might be considered unfounded. We will not attempt to make arguments on Owner’s behalf that might have been presented in Owner’s briefs. Arguments that Owner could have made, but did not, have been waived. See 37 C.F.R. § 41.67(c)(1)(vii) (“Any arguments or authorities not included in the brief permitted under this section or §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown.”). Accordingly, as Owner has failed to demonstrate error in the Examiner’s rejections, we sustain the § 103(a) rejections of claims 1-4 and 8-12 over Osakada and additional prior art. Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 18 Claim 6 -- § 103(a) over Smithson and USB The Examiner has set forth a rejection of claim 6 as obvious over Smithson and USB (ACP 11-14) that was not specifically proposed by Requester. We have considered Owner’s arguments in response to the rejection (Owner’s App. Br. 43-45), but find them not persuasive essentially for the reasons set forth by Requester (Requester’s Resp. Br. 23-29). Moreover, Owner has shown error neither in the Examiner’s rejection nor in Requester’s response. Arguments that Owner could have presented, but did not, have been waived. See 37 C.F.R. § 41.67(c)(1)(vii). We therefore sustain the Examiner’s § 103(a) rejection of claim 6 over Smithson and USB. IV. Non-entry of Rejections We will sustain the Examiner’s decision not to enter grounds of rejections against claims 13-31 and 45-51. The Examiner finds that Requester did not present any specific rejections and did not address all the requirements of specific claims, instead offering a piecemeal analysis of how different claim elements may relate to proposed prior art. As such, there were no specific issues or proposed rejections for the Examiner to adopt or not adopt from the Requester’s comments after the non-final action. ACP 14. See Manual of Patent Examining Procedure (MPEP) §§ 2666.05 and 2617, Eighth Ed., Rev. 8, July 2010 (a newly proposed ground of rejection in the written comments must comply with the guidelines for an original request for inter partes reexamination). Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 19 Requester in the briefs does not address the Examiner’s above-noted reasons for non-entry and thus does not demonstrate error in non-entry of any rejections against claims 13-31 and 45-51. Moreover, Requester cannot remedy deficiencies in the comments after non-final action by proposing specific grounds of rejection against the claims for the first time in the Appeal Brief. See 37 C.F.R. § 41.67(c)(1)(vi) (“No new ground of rejection can be proposed by a third party requester appellant, unless such ground was withdrawn by the examiner during the prosecution of the proceeding, and the third party requester has not yet had an opportunity to propose it as a third party requester proposed ground of rejection.”). The Examiner did not enter the proposed § 103(a) rejection of claim 5, as obvious over Osakada and Horowitz, because the Examiner finds that the references fail to teach a connector that comprises at least two identical multiplexors to be parallelly connected for decreasing the internal resistance of the connector in the combination as claimed. ACP 15. Requester refers to Dr. Min’s declaration (Min Dec’l), paragraphs 39 and 41, in support of the view that claim 5 should be rejected over Osakada and Horowitz. Requester’s App. Br. 30. While we agree that Horowitz explains that placing resistors in parallel decreases resistance, the allegation that “it applies to all electrical components” (Min Dec’l ¶ 39) is entitled to little weight, absent further explanation or a supporting reference in the art. Further, Dr. Min testifies that one of ordinary skill in the art would not consider it inventive, if desiring to decrease the internal resistance across the multiplexor in Osakada’s switching section 109, to connect two of the 4x1 multiplexors in parallel, with common inputs and common outputs. Id. ¶ 41. Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 20 However, claim 5 requires the structural limitation of at least two identical multiplexors to be parallelly6 connected, for “decreasing the internal resistance in the connector.” The rejection as proposed by Requester appears to begin with what could be considered a statement of intended use in the claim -- for decreasing the internal resistance in the connector -- as a reason for the artisan to place multiplexors in parallel. The proposed rejection appears to be based on the conclusion that it would have been obvious to provide at least two multiplexors in parallel because the artisan knew that placing resistors in parallel reduces resistance, and would have been motivated to place multiplexors in parallel because the artisan would have wanted to reduce resistance in Osakada’s switching section. However, the evidence presented by Requester does not establish that one of ordinary skill in the art would have any reason to reduce resistance across Osakada’s switching section 109. Nor has Requester presented any prior art that demonstrates that connecting identical multiplexors in parallel (for any reason) was known at the time of invention. As such, Requester has not shown that replacing one multiplexor with two parallelly connected multiplexors is “little more than the simple substitution of one known element for another.” Requester’s App. Br. 29. We have considered all of Requester’s arguments but agree with the Examiner that the requisite factual basis for a rejection of claim 5 under § 103(a) has not been provided. We sustain the Examiner’s decision not to enter the proposed rejection of claim 5 over Osakada and Horowitz. 6 Defined as “in a parallel manner.” Webster’s Third New Int’l Dict., Unabridged (1993). Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 21 V. Summary/Conclusion We sustain the rejection of claims 32 and 56 under 35 U.S.C. § 314(a) as enlarging the scope of the claims of the patent; We do not sustain the rejection of claims 33-44 and 57-68 under 35 U.S.C. § 314(a) as enlarging the scope of the claims of the patent. We sustain the rejection of claims 52-55 under 35 U.S.C. § 112, first paragraph, as lacking adequate written description. We sustain the rejections of claims 1-4 and 8-12 under 35 U.S.C. § 103(a) over prior art combinations that include Osakada. We sustain the rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Smithson and USB. We sustain the Examiner’s decision not to enter grounds of rejection against claims 5, 13-31, and 45-51. DECISION The Examiner’s decision favorable to the patentability of claims 5, 13-31, and 45-51 is affirmed. The Examiner’s decision adverse to the patentability of claims 1-4, 6, 8-12, 32-44, and 52-68 is affirmed with respect to claims 1-4, 6, 8-12, 32, 52-55, and 56 but reversed with respect to claims 33-44 and 57-68. Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§ 1.304(a), 1.956, and 41.79(e). AFFIRMED-IN-PART Appeal 2012-008960 Reexamination Control 95/000,539 Patent US 6,564,275 B1 22 Patent Owner: ATTENTION YING CHEN 333 W. EL CAMINO REAL, SUITE 380 SUNNYVALE, CA 94087 Third Party Requester: ORRICK, HERRINGTON & SUTLIFF, LLP IP PROSECUTION 4 PARK PLAZA, SUITE 1600 IRVINE, CA 92614-2558 cu Copy with citationCopy as parenthetical citation