Ex Parte Zimmerman et al

Patent Trial and Appeal BoardSep 27, 2012

11380865 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte CRAIG A. ZIMMERMAN, EARL W. BOONE, and VINOD CHERUKATT ________________ Appeal 2010-006182 Application 11/380,865 Technology Center 2800 ________________ Before MARC S. HOFF, CARLA M. KRIVAK, and THOMAS S. HAHN, Administrative Patent Judges.1 HAHN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Subsequent to the Decision in this appeal, Administrative Patent Judge Krivak has been substituted for Administrative Patent Judge Mantis Mercader who is no longer available to participate in the Decision. See In re Bose Corp., 772 F.2d 866, 868 (Fed. Cir. 1985). Appeal 2010-006182 Application 11/380,865 2 Appellants in a Request for Rehearing, filed August 29, 2012 (hereinafter “Request” or “Req.”), contend that the Board erred in the Decision on Appeal, mailed on June 29, 2012 (hereinafter “Decision” or “Dec.”), by affirming an obviousness rejection of claims 1-6, 8-12, 14-24, and 26-42 as being obvious over Janonis (US 5,612,580; issued March 18, 1997) (Dec. 5). OPINION The Decision has been reconsidered in view of the Request and no errors have been found. Therefore, the Decision is unchanged for the following reasons. Appellants contend: [T]he Board has misapprehended Appellants arguments regarding why modifying Janonis’ backup power supply to communicate using a serial management bus would be a change in the principle of operation of Janonis and thus would be an unacceptable modification according to the M.P.E.P. Rather than performing a principle of operation analysis of the Examiner’s proposed modification as was presented by Appellants in the Appeal and Reply Briefs, it appears the Board focused on whether the proposed modification would result in an unexpected result. (Req. 1-2). To support the contention that “it appears the Board focused on whether the proposed modification would result in an unexpected result,” Appellants next reproduce a portion of the Decision (Req. 2) with the following sentence emphasized in its entirety: “Persuasive evidence has not been put forth to show that introducing a further serial data bus in Janonis would result in any unexpected result or would be beyond the capability of an ordinarily skilled artisan” (id. (emphasis omitted)). Appeal 2010-006182 Application 11/380,865 3 Appellants solely have argued independent claim 10 (App. Br. 14-18; Reply Br. 2-4) with the assertion that Janonis fails to teach or suggest a recited “serial management bus communicatively coupling [a] backup power supply to [a] telecommunication switch” (App. Br. 14). Specifically, this appeal and the Request turns on Appellants’ contention that Janonis fails to teach or suggest serial management bus operation for a disclosed communication path. The record sets out that the Examiner’s findings and reasons for rejecting claim 10 references the findings and reasons identified for rejecting claim 1 with respect to “Janonis disclos[ing] the recite[d] telecommunication switch limitations” (Ans. 6). Turning to the claim 1 rejection, the Examiner identifies the following findings from Janonis in connection with claimed limitations, namely providing a telecommunications switch (fig 1, item 10; col. 2-4) coupled to a backup supply (28, 30, 48; col. 2, line 65 to col. 3, line 24) by a communications path that allows communication of control information from the telecommunication switch to the backup power supply (col. 3, lines 19-24). (Ans. 3). Appellants are not understood to contest these findings nor the Examiner’s acknowledgment that “Janonis does not expressly disclose the communication path that couples the telecommunication switch to the backup power supply is a serial management bus” (Ans. 4). Instead, Appellants contend to have “presented arguments in the Appeal and Reply Briefs regarding why the Examiner’s proposed modifications of a simple battery and switch of Janonis to communicate using the required ‘serial management bus’ would be a change in the principle of operation from what is described in Janonis” (Req. 2). Appeal 2010-006182 Application 11/380,865 4 The Decision identifies that the Board agreed with and adopted the Examiner’s findings as to a communication path between a telecommunication switch and a backup power supply being taught by Janonis (Dec. 4). Further, the Decision identifies findings, in agreement with the Examiner, that Janonis teaches a processor communicating with a load and a user via a serial data bus (id.). Appellants, in principle, contend that: [E]ven if Janonis teaches toward the use of serial communication paths to end users and loads attached to the uninterruptible power supply, it does not change the fact that it would require a drastic change in the principle of operation for the Janonis system to communicate with contactor (48) of the alleged backup power supply across a serial management bus. Contactor (48) is not an end user or an attached load, and it would require a change in the principle of operation of contactor (48) to allow it to communicate in the same way that the Janonis system may communicate with the end user and attached loads. (Reply Br. 4). The understood record identifies that Appellants do not contest that Janonis teaches the claimed communications path or that Janonis “teaches toward the use of serial communication paths” (id.). Instead, Appellants assert as a conclusory contention that modification of the Janonis taught communication path to be a serial communication path would require a “drastic change in the principle of operation” (id.). The Examiner, as reproduced in the Decision (Dec. 4), reasons: [S]ince Janonis disclose[s] that the processor has at least two communication paths that are serial buses, it would have been obvious to one skilled in the art to configure the processor-to- contactor communication path as a serial communication bus as well. This serial communication bus meets the recited Appeal 2010-006182 Application 11/380,865 5 limitation of “a serial management bus communicatively coupling the backup power supply to the telecommunication switch.” (Ans. 8-9). Appellants’ asserted contention of change in principle of operation is found to be solely via attorney argument without persuasive supporting evidence, and, therefore, the argument is unavailing. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”); see also In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). This appeal involves a rejection premised on a known prior art structure, i.e., Janonis’s taught communication path, that is modified with another element known in the field, i.e., a serial communication bus. The Supreme Court has held that to avoid obviousness in such a circumstance of claiming a prior art structure “altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citation omitted). No persuasive evidence has been found as to the Examiner’s modification being anything beyond a mere substitution nor has “[p]ersuasive evidence . . . been put forth to show that introducing a further serial data bus in Janonis would result in any unexpected result or would be beyond the capability of an ordinarily skilled artisan” (Dec. 5). For the foregoing reasons, the Board continues in the belief that there is no misapprehension as to Appellants’ attorney argument that the Examiner’s identified modification of Janonis results in a change in the principle of operation that renders the appealed rejection to be in error under Appeal 2010-006182 Application 11/380,865 6 35 U.S.C. § 103(a). Further, the Board continues to conclude that Appellants’ argument is unavailing. DECISION Appellants’ Request has been granted to the extent of reconsidering the Decision, but the Request is denied with respect to making any modifications of the Decision. 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). REHEARING DENIED babc