Ex Parte Balay et al

Patent Trial and Appeal BoardNov 15, 2012

09966095 (P.T.A.B. Nov. 15, 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. 09/966,095 10/01/2001 Francois Balay Balay 2-1 4702 46900 7590 11/16/2012 MENDELSOHN, DRUCKER, & ASSOCIATES, P.C. 1500 JOHN F. KENNEDY BLVD., SUITE 405 PHILADELPHIA, PA 19102 EXAMINER DANG, KHANH ART UNIT PAPER NUMBER 2111 MAIL DATE DELIVERY MODE 11/16/2012 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 ____________ Ex parte FRANCOIS BALAY and PETER RIEDL ____________ Appeal 2010-001331 Application 09/966,0951 Technology Center 2100 ____________ Before THU A. DANG, CAROLYN D. THOMAS, and GREGORY J. GONSALVES, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Agere Systems Inc. Appeal 2010-001331 Application 09/966,095 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-3, 5-8, 10-12, 14-17, 19-21, and 23-26, which are all the claims remaining in the application. Claims 4, 9, 13, 18, 22, and 27 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to a high speed structure and method for the transfer of information from a first PCI bus to a second PCI bus. See Spec. 1:8-9. Claim 1 is illustrative: 1. A system for interconnecting two or more computer bus architectures, comprising: a first bus segment to transmit data information; a first half bridge circuit to connect said first bus segment; a second bus segment to transmit data information; a second half bridge circuit to connect said first half bridge circuit, said second half bridge circuit to transfer data information between said first bus segment and said second bus segment; a plurality of data paths to connect said first half bridge circuit and said second half bridge circuit; wherein said plurality of data paths to connect said first half bridge circuit and said second half bridge circuit are scalable to correspond to a bandwidth needed for a particular application. Appeal 2010-001331 Application 09/966,095 3 Appellants appeal the following rejections: R1. Claims 1-3, 6-8, 10-12, 15-17, 19-21, and 24-26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tal (US 6,662,254 B1, Dec. 9, 2003) and Lucent (Press Release, Lucent Technologies, Lucent Technologies Delivers New Field-Programmable System Chips for High Speed PCI Bus and Backplane Data Interfaces (Nov. 8, 1999)); R2.2 Claims 5, 14, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tal and Lange (US 6,457,091 B1, Sep. 24, 2002); R3. Claims 1-3, 5, 7, 8, 10-12, 14, 16, 17, 19-21, 23, 25, and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lange and Lucent; and R4.3 Claims 6, 15, and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lange in view of Official Notice. Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims as set forth below. See 37 C.F.R. § 41.37(c)(1)(vii). 2 In order to expedite matters, this rejection shall be viewed as being unpatentable over Tal, Lucent, and Lange. 3 In order to expedite matters, this rejection shall be viewed as being unpatentable over Lange, Lucent, and Official Notice. Appeal 2010-001331 Application 09/966,095 4 ANALYSIS Claims 1-3, 5-8, 10-12, 14-17, 19-21, and 23-26 Issue: Did the Examiner err in finding that Lucent discloses that “a plurality of data paths . . . are scalable to correspond to a bandwidth needed,” as claimed? Appellants contend that “a reading of Lucent reveals that the manufacturer of the ORT4622 intended its use across a backplane within a system” (App. Br. 4). Appellants further contend that “Lucent Technologies fails to disclose or suggest use of the ORT4622 to connect two bus segments, much less disclose or suggest scalability depending on a bandwidth needed for a particular application” (App. Br. 4-5). The Examiner found that “Tal does not disclose that the serial channel comprising 4 full duplex pair can be ‘scalable’ depending on a bandwidth needed” (Ans. 5), and that “Lange does not disclose that the signal lines . . . are ‘scalable’ depending on a bandwidth needed” (Ans. 9). Instead, the Examiner relies upon Lucent for this scalability feature, and specifically found that Lucent Technologies discloses the use of the ORT4622 half bridge (page 1, 4th paragraph) including field programmable gate arrays (FPGAs), see page 1, 1st paragraph, and containing “a 4-channel 622 megabit-per-second (2.5 gbps when all 4 channels are used)[”] . . . . The ORT4622 half bridge is clearly “scalable” depending on the bandwidth needed. (Ans. 5; see also id. at 10). We agree with the Examiner. We start by noting that Appellants’ Specification admits that “[t]he first and second half bridge circuits, 4 and 6, would consist of an ORT4622 Lucent FPSC (Field Programmable System Chip)” (Spec. 6:20-21). In other Appeal 2010-001331 Application 09/966,095 5 words, Appellants concede that they use the cited ORT4622 Lucent FPSC in their circuit design (see Appellants’ Fig. 1). Appellants’ Figure 1 is depicted below: Figure 1 illustrates utilizing two half bridge circuits 4 and 6 (ORT4622s) to connect to PCI segments. While Appellants admit that they are indeed using the cited Lucent’s ORT4622 component, Appellants contend that Lucent’s ORT4622 was not intended for use with a scalable half bridge circuits between two bus segments, as claimed. We disagree with the contention. Even if we assume arguendo (without deciding) that Lucent’s ORT 4622 was not “intended” to be used between bus segments (as proffered by Appellants), the fact remains that it does indeed provide the scalability claimed. “Intentions” are not the measure of obviousness. “What matters is the objective reach of the claim. If the claim extends to what is obvious, it is Appeal 2010-001331 Application 09/966,095 6 invalid under § 103.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Here, we find that using the known Lucent’s ORT4622 component yielded the predictable result of providing scalability to data paths. For example, Appellants’ Specification states that “the first half bridge circuit 4 is connected with the second half bridge circuit 6 by four full duplex high speed serial data lines 5 each having a bandwidth of 622 Mb/s. The four full duplex high speed serial lines 5 would [have] a total bandwidth of 2.5 Gb/s” (Spec. 6:5-8). Similarly, Lucent’s ORT4622 “contains a 4-channel 622 megabit-per- second (2.5 gbps when all 4 channels are used) full-duplex synchronous interface” (Lucent, p. 1, ¶ 4). In other words, it is apparent that Appellants are using the cited Lucent ORT4622 chip to achieve its’ scalability, as they expressly admit that such device provides scalability (see App. Br. 4 (“even if those scalable serial channels are part of the ORT 4622”)). Thus, we agree with the Examiner that “[s]ince the Lucent Technologies’ ORT4622 is employed by Appellants to provide ‘scalability,’” (Ans. 14), it is a predictable use thereof. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” KSR, 550 U.S. at 416, especially if the combination would not be “uniquely challenging or difficult for one of ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Here, Appellants have not shown that such a combination was uniquely difficult. Furthermore, “analysis [of whether the subject matter of a claim would have been obvious] need not seek out precise teachings directed to the Appeal 2010-001331 Application 09/966,095 7 specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” (citation omitted)). Here, the Examiner established, and Appellants conceded, that the knowledge of scalability of data paths was in the prior art. Therefore, based on the record before us, we find no error in the Examiner’s obviousness rejection of representative claim 1 essentially for the reasons indicated by the Examiner. In view of the above discussion, since Appellants have not demonstrated that the Examiner erred in finding the argued limitations in the disclosure of Lucent, the Examiner’s 35 U.S.C. § 103(a) rejections of representative independent claim 1, as well as claims 2, 3, 5-8, 10-12, 14-17, 19-21, and 23-26 not separately argued by Appellants, is sustained. Appeal 2010-001331 Application 09/966,095 8 DECISION We affirm the Examiner’s § 103 rejections R1-R4. 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 babc