Ex Parte Bragagnini et al

Patent Trial and Appeal BoardSep 17, 2014

10535476 (P.T.A.B. Sep. 17, 2014)

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. 10/535,476 05/17/2005 Andrea Bragagnini 007511.00003 3939 11435 7590 09/17/2014 BANNER & WITCOFF, LTD. & attorneys for client 007511 1100 13th Street, N.W. Suite 1200 WASHINGTON, DC 20005-4051 EXAMINER ROCHE, JOHN B ART UNIT PAPER NUMBER 2184 MAIL DATE DELIVERY MODE 09/17/2014 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 ANDREA BRAGAGNINI and ANTONIO VARRIALE ____________________ Appeal 2011-013130 Application 10/535,476 Technology Center 2100 ____________________ Before CARL W. WHITEHEAD JR., JOHNNY A. KUMAR, and CATHERINE SHIANG, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-013130 Application 10/535,476 2 STATEMENT OF THE CASE This is a decision on Appellants’ Request for Rehearing under 37 C.F.R. § 41.52,1 requesting we reconsider our Decision of May 16, 2014, where we affirmed the rejections of claims 1, 3–9, and 11–15 under 35 U.S.C. § 103(a) as unpatentable over Leger,2 Walker,3 and Green.4 We have reconsidered our Decision in light of Appellants’ Request for Rehearing, but we decline to change the Decision. ANALYSIS First Issue Appellants point out “Leger and Walker Do Not Result in DMA Modules Having Input/Output Buffers Coupled Together in the Manner Claimed.” Request 2 (emphasis omitted). Appellants’ arguments (Request 2–5) are restatements of the arguments presented in Appellants’ briefing as to alleged errors in the Examiner’s fact finding. We find that the Appellants’ restatements of arguments are addressed to the Examiner’s application of the references rather than to the points believed to have been misapprehended or overlooked by the Board. Appellants have failed to show any matter that was misapprehended or overlooked by the Board in rendering this Decision. 1 “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). 2 U.S. Patent No. 5,781,799 (July 14, 1998). 3 U.S. Patent Application Pub. No. 2003/0033454 A1 (Feb. 13, 2003). 4 U.S. Patent No. 6,870,929 B1 (Mar. 22, 2005). Appeal 2011-013130 Application 10/535,476 3 Second Issue Appellants point out “‘Configured To’ Language is Entitled to Patentable Weight.” Request 5–9 (emphasis omitted). Appellants also contend, “While the Board has formally designated these positions as a new ground of rejection, Appellant understands this portion of the Decision as establishing at least one new ground of rejection against independent claims 5 and 11 . . . .” Request 5 (emphasis omitted). Appellants’ contention is contrary to the record. The Board did not establish a new ground of rejection against independent claims 5 and 11. Rather, the Board stated, “We also note in passing that claims 5 and 11 recite ‘configured to’ which is nonfunctional claim language that is not entitled to any patentable weight.” Decision 8 (emphasis ours). Thus, the Board did not rely on the “configured to” claimed language to support our analysis, and we have already addressed Appellants’ arguments regarding claims 1, 3–9, and 11–15 in our decision (Decision 5–8). DECISION In view of the foregoing discussion, we grant Appellants’ Request for Rehearing to the extent of reconsidering our decision, but we deny Appellants’ request with respect to making any change thereto. 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). REQUEST FOR REHEARING DENIED msc