Ex Parte Cheah et al

Patent Trial and Appeal Board

Sep 26, 2013

11659773 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SIN HUI CHEAH and
RONALD ALEXANDER FLEMING
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Appeal 2011-003748
Application 11/659,773
Technology Center 2100
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Before DAVID M. KOHUT, LYNNE E. PETTIGREW, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-003748
Application 11/659,773

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Illustrative Claim
The claims are directed to communicating both digital and analog data
over a data bus, such as a universal serial bus (USB), with a single
connector, such as a USB connector. Specification, page 1, ll. 12–16. Claim
1, reproduced below with the disputed element italicized, is illustrative of
the claimed subject matter:
1. An electronic apparatus, comprising:
interface means for coupling said electronic apparatus to
one of a digital device and an analog device;
control means for determining whether said interface
means is coupled to said digital device or said analog device
and generating a mode control signal responsive to said
determination; and
switching means, including a field effect transistor, for
selectively coupling said interface means to one of a digital
processing unit of said electronic apparatus for processing
digital signals and an analog processing unit of said electronic
apparatus for handling analog signals responsive to said mode
control signal.

Rejections
The Examiner rejected claims 1–4, 6–11, 13–15, 17, 18, 20–23, and
25–28 under 35 U.S.C. § 103(a) as unpatentable over Zheng
(U.S. 2006/0053239 A1; Mar. 9, 2006) and Young (U.S. 2003/0097501 A1;
May 22, 2003). Ans. 3–15.
Appeal 2011-003748
Application 11/659,773

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The Examiner rejected claims 5, 16, and 24 under 35 U.S.C. § 103(a)
as unpatentable over Zheng, Young, and Dwyer (U.S. 2005/0088620 A1;
Apr. 28, 2005). Ans. 15–18.
The Examiner rejected claims 12, 19, 29, and 30 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Zheng, Young, and Lee
(U.S. 7,039,201 B1; May 2, 2006). Ans. 18–21.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief and Reply Brief. We refer to the Briefs and
the Answer for the respective positions of Appellants and the Examiner.
Obviousness Rejection of claims 1–4, 6–11, 13–15,
17, 18, 20–23, and 25–28
Appellants argue claims 1–4, 6–11, 13–15, 17, 18, 20–23, and 25–28
as a group. Ap. Br. 5–8. We choose independent claim 1 as representative
of the issue on appeal.
Appellants contend that the Examiner erred because:
the proposed combination of Zheng and Young fails to disclose
or suggest, inter alia, the desirability of using “a field effect
transistor” for the function of multiplexing both digital and
analog signals (i.e., selectively coupling an interface to a digital
processing unit or an analog processing unit responsive to a
mode control signal), as claimed.
App. Br. 6. Appellants also contend that Zheng teaches a completely
different solution and thereby teaches away. Id. at 7. Appellants further
argue that the Examiner has not provided evidence sufficient to show that
Zheng’s relay circuit includes a field effect transistor (Reply Br. 4), that the
substitution of a switch integrated circuit with a field effect transistor for
Appeal 2011-003748
Application 11/659,773

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Zheng’s relay circuit would not have been obvious because Zheng’s device
specifically relies on the G6k-2G-Y relay and the substitution “likely” would
render Zheng’s device inoperable (id. at 4–5), and that Zheng’s only
operable and enabling device necessarily includes the G6k-2G-Y relay (id. at
5–6). Appellants’ arguments raise the issue of whether the Examiner’s
rejection of claim 1 as obvious over Zheng and Young is erroneous.
We are not persuaded that the Examiner has erred. The Examiner
correctly points out, referring to claim 1, that the claim does not recite the
switching means is a field effect transistor. Ans. 22. Claim 1 requires the
switch merely to include a field effect transistor. The Examiner finds that
“Zheng teaches the use of a general ‘switch integrated circuit,’” (Ans. 22;
see Ans. 4–5, referring to Zheng, ¶ 11) and that integrated circuits are well
known to include field effect transistors. Ans. 22. We are not persuaded by
Appellants that “the mere fact that a prior art device could (in hindsight) be
modified to produce a claimed invention is not a basis for an obviousness
rejection unless the prior art suggests the desirability of such a
modification.” App. Br. 7–8. Appellants have not persuaded us that using a
switch that includes a field effect transistor “is more than the predictable use
of prior art elements according to their established functions.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants’ arguments against
Zheng individually (see, e.g., Reply Br. 4–6) are unpersuasive because the
rejection is based on what the combination of prior art teachings would have
suggested to one skilled in the art (Ans. 11–13). Appellants have not
presented persuasive argument or evidence that the Examiner’s finding that
integrated circuits were well known to include field effect transistors (Ans.
12, 22) is erroneous.
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We also are unpersuaded by Appellants’ argument that Zheng teaches
away (App. Br. 7) because a prior-art reference does not teach away from
the claimed subject matter unless the prior-art reference criticizes, discredits,
or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Appellants have identified no such criticism,
so we are unpersuaded that the Examiner has erred.
Accordingly, because we are not persuaded of error, we sustain the
Examiner’s rejection of independent claim 1. We also sustain the rejection
of independent claims 13 and 21 and of dependent claims 2–4, 6–11, 14, 15,
17, 18, 20, 22, 23, and 25–28 argued therewith.

Appellants argue claims 5, 16, and 24 under a separate heading but
argue only that “Dwyer is unable to remedy the deficiencies of Zheng and
Young pointed out above in connection with independent claims 1, 13 and
21 (from which claims 5, 16 and 24 ultimately depend, respectively).” App.
Br. 8. Because we are not persuaded of deficiencies in the Examiner’s
rejection of claims 1, 13, and 21, we sustain the rejection of claims 5, 16,
and 24.

Similarly, Appellants argue the rejection of claims 12, 19, 29, and 30
on the basis that Lee is unable to remedy the deficiencies of Zheng and
Young in the rejection of claims 1, 13, and 21. App. Br. 9. Because we are
not persuaded of such deficiencies, we sustain the rejection of claims 12, 19,
29, and 30.

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DECISION
For the above reasons, the Examiner’s rejection of claims 1–30 is
affirmed.

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).

AFFIRMED

ELD