Ex Parte Carlson

Patent Trial and Appeal BoardNov 26, 2012

09882100 (P.T.A.B. Nov. 26, 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. 09/882,100 06/15/2001 Arthur J. Carlson 3875.0010001 7713 26111 7590 11/26/2012 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER BOCURE, TESFALDET ART UNIT PAPER NUMBER 2634 MAIL DATE DELIVERY MODE 11/26/2012 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 ARTHUR J. CARLSON Appeal 2011-007440 Application 09/882,1001 Technology Center 2600 ____________ Before JEAN R. HOMERE, JAMES R. HUGHES, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Filed June 15, 2001. Broadcom Corporation is the real party in interest. (App. Br. 1.) Appeal 2011-007440 Application 09/882,100 2 STATEMENT OF THE CASE In a paper filed September 28, 2012, Appellant requests a rehearing under 37 C.F.R. §41.52 from the Opinion of the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board, hereinafter the “Board”) dated July 30, 2012. In the Opinion, we affirmed the Examiner’s rejection of claims 1-22. Appellant alleges that the Board erred by misapprehending or overlooking the arguments presented in the Brief. We summarize Appellant’s principal allegations of error as follows: (1) Appellant argues we erred by finding in a “numerical hypothetical example” that the penultimate limitation of claim 1, that is, “a multiple of a predetermined number of bits” could very well be numerically equal to the final limitation of claim 1, that is, “any integer number of bits.” (Req. Reh’g. 4); (2) Appellant urges that our finding above ignores the arguments presented in the Appeal that Hardy fails to disclose the formation of symbols constituting “a varying number of bits depending on the data rate.” (Id. at 4-5.); and, (3) Appellant argues that our finding ignores the fact that Figure 4 of Appellant’s Specification describes two separate steps, at reference numerals 405 and 407. (Id. at 6-7.) Consequently, Appellant requests a rehearing of the Board’s Decision affirming the rejection of claims 1-22. (Id. at 7.) Appeal 2011-007440 Application 09/882,100 3 We have carefully reviewed the Opinion in light of Appellant’s allegation of errors. We will address those remarks in the order in which they are presented in the Request and as outlined above. First, Appellant argues that we erred by selecting a “numerical hypothetical example” in our equating of the limitations “a multiple of a predetermined number of bits” and “any integer number of bits.” However, Appellant admits that these separate steps “may coincidentally converge to the same number.” (Req. Reh’g. 5.) Consequently, in light of Appellants’ admission, we find no error in our “numerical hypothetical example.” Despite acknowledging that our “numerical hypothetical example” is correct, Appellant argues that our finding does not acknowledge the arguments with regard to whether the Hardy reference “disclosed the formation of symbols constituting a varying number of bits depending on the data rate.” (Id.) In support of the position that the present invention forms symbols utilizing a varying number of bits, Appellant urges us to consider Figure 4 of the present Specification, which discloses two separate steps, at reference numerals 405 and 407. We note that “[T]he PTO gives claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Appeal 2011-007440 Application 09/882,100 4 Here, Appellant’s argument is not commensurate with the limitations of representative claim 1, or claims 2-22 which were not argued separately. Appellant argues limitations not recited in the claims. The claims do not recite the “formation of symbols constituting a varying number of bits depending on the data rate.” (Req. Reh’g. 5.) We decline to read the argued limitations into the claims from the Specification. We find, as we did in our original Opinion, that Appellant’s claims fail to expressly recite that “a multiple of a predetermined number of bits” is different from “any integer number of bits” and Appellant’s arguments to the contrary are not commensurate with the scope of the appealed claims. We also find, as we did in our original opinion, that Hardy, the reference relied upon by the Examiner, teaches transmitting data utilizing either a character mode or a packet mode, dependent upon the data rate, and we find that the characters or symbols in Hardy presumably contain an identical number of bits during each form of transmission. We are therefore satisfied that all arguments timely submitted by the Appellant in the Briefs were adequately addressed in the original Opinion. We have consequently found that Appellant has not shown that the Board erred by misapprehending or overlooking those identified arguments previously raised in the Briefs. Therefore, we maintain our position as set forth in the original Opinion that Appellant has not shown error in the Examiner’s rejections of claims 1-22. Appeal 2011-007440 Application 09/882,100 5 CONCLUSION In view of the foregoing discussion, we decline to modify our decision of Appeal. Consequently, we deny Appellant’s Request for Rehearing. REQUEST FOR REHEARING DENIED peb