Ex Parte Arndt et al

Board of Patent Appeals and Interferences

Jul 11, 2007

10887525 (B.P.A.I. Jul. 11, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RICHARD LOUIS ARNDT, PATRICK ALLEN BUCKLAND,
GREGORY MICHAEL NORDSTROM, and STEVEN MARK THURBER
__________

Appeal 2007-1597
Application 10/887,525
Technology Center 2100
__________

Decided: July 11, 2007
__________

Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2007-1597
Application 10/887,525

THE INVENTION
The disclosed invention relates generally to the data processing field
and, more particularly, to a method, apparatus and system for isolating
input/output adapter interrupt domains in a data processing system.
(Specification 1).
Independent claims 1, 10, and 15 are illustrative:
1. A data processing system, comprising:

a system bus;

a host bridge connected to the system bus; and

a plurality of input/output units connected to the host bridge,
wherein the host bridge includes functionality for isolating interrupt
resources available to the plurality of input/output units from one
another.

10. A method for isolating interrupt resources available to a
plurality of input/output units in a data processing system, comprising:

isolating the interrupt resources available to the plurality of
input/output units from one another at a host bridge to which the
plurality of input/output units are connected.

15. An apparatus for isolating interrupt resources available to a
plurality of input/output units in a data processing system, comprising:

a host bridge for connecting the plurality of input/output units
to a system bus, the host bridge including functionality for isolating
interrupt resources available to the plurality of input/output units from
one another.

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THE REFERENCES
Applicant’s Admitted Prior Art (APPA), “Background of the
Invention,” (Specification 1-3).

Kennel US 6,219,743 B1 Apr. 17, 2001
(Filed Sept. 30, 1998)
Holm US 2002/0152344 A1 Oct. 17, 2002
(Filed Apr. 17, 2001)
Arndt US 6,523,140 B1 Feb. 18, 2003
(Filed Oct. 7, 1999)

THE REJECTIONS
Claims 10 and 14 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by AAPA.
Claims 1, 7-9, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Holm in view of AAPA.
Claims 2, 6, and 16-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Holm in view of AAPA, and
further in view of Kennel.
Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Holm in view of AAPA, and further in
view of Kennel and Arndt.
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of AAPA in view of Kennel.

Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for the respective details
thereof.

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Independent claim 10
We consider first the Examiner’s rejection of independent claim 10 as
being anticipated by AAPA.
Appellants argue the claimed “host bridge,” is a component that
corresponds only to the PCI Host Bridge (PHB) 306 in the AAPA, and not
to the specially designed bridge chip (i.e., Unique Bridge Chip 308) (Br. 11;
see also Specification, Fig. 3). Appellants assert that IOAs (i.e., I/O
Adapters 302 and 304) isolated by the specially designed bridge chip in the
AAPA are distinct from, and therefore cannot teach, IOAs isolated by the
host bridge as claimed (id.). Thus, Appellants conclude that AAPA does not
teach the claimed feature, “isolating the interrupt resources available to the
plurality of input/output units from one another at a host bridge” (id.).
Appellants further argue that AAPA does not teach the claimed
feature, “host bridge to which the plurality of input/output units are
connected.” Appellants note that AAPA shows the IOAs connected to the
specially designed chip 308, and not to PHB 306. Appellants conclude that
the claimed feature specifically calls for the input/output units to be
connected to the host bridge (id.).
The Examiner disagrees. The Examiner asserts that Appellants are
arguing limitations that are not claimed. In particular, the Examiner broadly
construes the language “at a host bridge” to mean “near” a host bridge
(Answer, 14; claim 10). The Examiner further views PHB 306 and Bridge
Chip 308 (Specification, Fig. 3) as a single-unit host bridge (Answer, 14).
In the Reply Brief, Appellants argue that in the context of an
electronic circuit, the word “at” means at a precise location, not a proximate
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location (Reply Br. 3, ¶ 1). Appellants further argue that the Examiner’s
broad interpretation of the word “at’ in the claim improperly makes the
isolation performed at PHB 306 and Bridge Chip 308 one and the same
(Reply Br. 4, ¶ 4).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharm., 432
F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005) (citing
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992)). Anticipation of
a patent claim requires a finding that the claim at issue “reads on” a prior art
reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1945 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
We begin our analysis by performing an electronic search of the entire
Specification. We find the literal language “at a host bridge” recited only
within claim 10. In contrast, we find the more precise language “in a host
bridge” in three separate places within the Specification, as follows:
The data processing system includes a plurality of
input/output adapters, and isolation of interrupt resources
available to the input/output adapters is controlled by
functionality in a host bridge that connects the plurality
of input/output adapters to a system bus of the data
processing system … [emphasis added].
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(Specification, Abstract).

The data processing system includes a plurality of
input/output adapters, and isolation of interrupt resources
available to the input/output adapters is controlled by
functionality in a host bridge that connects the plurality
of input/output adapters to a system bus of the data
processing system … [emphasis added].

(Specification 4).

Isolation of interrupt resources available to the
input/output adapters is controlled by functionality in a
host bridge that connects the plurality of input/output
adapters to a system bus of the data processing system,
… [emphasis added].

(Specification 25, ¶ 3).

Therefore, we agree with the Examiner that Appellants are arguing
limitations found only within the Specification. We note that patentability is
based upon the claims. “It is the claims that measure the invention.” SRI
Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227 USPQ 577, 585
(Fed. Cir. 1985) (en banc). Limitations appearing in the Specification but
not recited in the claim are not read into the claim. E-Pass Techs., Inc. v.
3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003)
(claims must be interpreted “in view of the specification” without importing
limitations from the specification into the claims unnecessarily).
Here, we conclude that Appellants have had ample opportunity to
amend their claim to recite “in a host bridge” instead of “at a host bridge” (if
Appellants intended the former meaning). We decline to read limitations
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from the Specification into the claims. Furthermore, we note that AAPA
discloses: “Terminal bridges 312 and 314 contain endpoint states of IOAs
302 and 304, respectively, and serve to isolate IOAs 302 and 304 from one
another” (Specification 15-16). Thus, we find that if IOAs 302 and 304 are
isolated from one another in Bridge Chip 308, then IOAs 302 and 304 are
necessarily (i.e., inherently) isolated from one another at PCI host bridge
306 (i.e., “at a host bridge,” as claimed) (Specification, Prior Art Fig. 3; see
also claim 10).
Turning to Appellants’ second argument, (i.e., that AAPA does not
teach a “host bridge to which the plurality of input/output units are
connected”), we begin our analysis by broadly but reasonably construing the
recited term “connected” in a manner consistent with the Specification
(claim 10). See In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667
(Fed. Cir. 2000) (“[D]uring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification.”). When
we look to the Specification for context, we find several instances where
Appellants use the term “connected” to mean an indirect connection. For
example:
The system is generally designated by reference number 300,
and includes a plurality of IOAs, for example, IOAs 302 and
304. IOAs 302 and 304 are connected to PHB 306 of a data
processing system, such as data processing system 100
illustrated in Figure 1, through a bridge structure that comprises
unique, specially designed bridge chip 308 [emphasis added].

(Specification 15, ¶ 3).

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See also: “PCI IOAs 120-121 are connected to PCI local bus 140
through I/O fabric 180, which comprises switches and bridges” [emphasis
added] (Specification 9, ¶ 2).
Thus, we find a broad but reasonable interpretation of the claim term
“connected” (that is fully consistent with the Specification) reads on AAPA
which clearly shows a plurality of input/output units (IOAs 302 and 304)
that are connected to a host bridge (PHB 306) through Bridge Chip 308.
Thus, we conclude that a proper construction of the claim term “connected”
broadly reads on indirect connections. cf. Searfoss v. Pioneer Consol.
Corp., 374 F.3d 1142, 1149-50, 71 USPQ2d 1517, 1521-22 (Fed. Cir. 2004)
(the construction of the claim term “connect” (i.e., a direct connection vs.
indirect connection) is determined by interpreting the claim language in light
of the Specification).
Therefore, for at least the aforementioned reasons, we conclude the
Examiner has met the burden of presenting a prima facie case of
anticipation. Accordingly, we will sustain the Examiner’s rejection of
independent claim 10 as being anticipated by AAPA.
Dependent claim 14
We further note that Appellants have not presented any substantive
arguments directed separately to the patentability of dependent claim 14. In
the absence of a separate argument with respect to the dependent claims,
those claims stand or fall with the representative independent claim. See In
re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991). See
also 37 C.F.R. § 41.37(c)(1)(vii)(2004). Therefore, we will sustain the
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Examiner’s rejection of claim 14 for the same reasons discussed supra with
respect to independent claim 10.
Claims 1, 7-9, and 15
We consider next the Examiner’s rejection of claims 1, 7-9, and 15 as
being unpatentable over Holm in view of AAPA. Since Appellants’
arguments with respect to this rejection have treated these claims as a single
group which stand or fall together, we will select independent claim 1 as the
representative claim for this rejection because we find it is the broadest
independent claim in this group. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Regarding specific claim limitations, we note that Appellants
essentially restate arguments made previously with respect to AAPA and
independent claim 10. We note that we have found supra that AAPA
discloses isolating interrupt resources at a host bridge. Here, we note the
language of claim 1 merely requires the host bridge include functionality for
isolating interrupt resources. Thus, we conclude that the Examiner’s
proffered combination of Holm and AAPA teaches and/or suggests a host
bridge (Holm, Fig. 1, PCI Host Bridge 104 or 105 or 106) that includes
functionality for isolating interrupt resources (i.e., AAPA Bridge Chip 308
(Specification, Fig. 3), as discussed supra with respect to independent claim
10). Appellants further argue that Holm, considered separately, does not
teach “a plurality of input/output units connected to the host bridge” (Br. 17,
emphasis added). We disagree, noting again our construction of the recited
term “connected” as discussed supra with respect to independent claim 10.
Therefore, we find that Holm, as modified by AAPA, teaches and/or
suggests all the features of claim 1.
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Motivation
Appellants argue there is no motivation to combine Holm and AAPA
because Holm reveals no need for preventing denial-of-service attacks
through Holm’s system (Br. 24). Appellants further assert that Holm is
concerned with processing PCI interrupts in logically partitioned computer
systems, and not with preventing denial-of-service attacks (id.). Appellants
conclude the Examiner has impermissibly relied upon hindsight in
formulating the rejection (Br. 30).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). In addition to the findings under Graham, there
must also be “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), cited with approval in KSR
Int’l Co. v. Teleflex Inc.,127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396
(2007). “[H]owever, the analysis need not seek out precise teachings
directed to the 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, 127 S. Ct. at 1741, 82
USPQ2d at 1396.
With respect to the issue of hindsight, in KSR the U.S. Supreme
Court reaffirmed that “[a] factfinder should be aware, of course, of the
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distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.” KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397. See
also Graham v. John Deere Co., 383 U.S. at 36, 148 USPQ at 474.
Nevertheless, in KSR the Supreme Court also qualified the issue of hindsight
by stating that “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 127 S. Ct. at 1742-43, 82 USPQ2d at 1397.
In KSR, the Supreme Court further stated:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar
devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.

KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396.
This reasoning is applicable here. We note that Holm teaches a
method of PCI interrupt routing in a logically partitioned guest operating
system (p. 5, ¶ 34). We have found supra that AAPA discloses isolating
interrupt resources at a host bridge that provides functionality for isolating
interrupt resources. Therefore, we conclude it would have been obvious to
a person of ordinary skill in the art that modifying Holm with the teachings
of AAPA would have resulted in a predictable variation of Holm, i.e., a
combined system where interrupt resources are isolated so as to prevent
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denial-of-service attacks (i.e, “demand of service attacks”), such as those
disclosed by AAPA at paragraph 7:
[0007] In a data processing system, it is important that
IOAs, or parts of IOAs, not be able to gain access to the
interrupt resources of other IOAs or other parts of IOAs.
Isolation of IOA interrupt resources is important, for
example, to prevent a demand of service attack by one
IOA that can result in an overall system breakdown. In
an LPAR data processing system environment, in
particular, it is important that interrupt resources not be
shared between IOAs because doing so will restrict the
ability to assign the IOAs, or parts of IOAs, to different
partitions of the system [emphasis added].

(Specification, “Description of Related Art,” ¶ 7).

Therefore, we agree with the Examiner that the proffered combination
would have been an advantageous improvement to Holm, since the
combined system of Holm and AAPA would have provided protection
against denial-of-service attacks. Thus, when we take account of the
inferences and creative steps that a person of ordinary skill in the art would
have employed, we conclude the Examiner has articulated an adequate
reasoning with a rational underpinning that reasonably supports the legal
conclusion of obviousness.
For at least the aforementioned reasons, we conclude the Examiner
has met the burden of presenting a prima facie case of obviousness.
Accordingly, we will sustain the Examiner’s rejection of independent claim
1 as being as being unpatentable over Holm in view of AAPA.
Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we have decided the appeal
with respect to the remaining claims in this group on the basis of the selected
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claim alone. Therefore, we will sustain the Examiner’s rejection of claims
7-9 and 15 as being unpatentable over Holm in view of AAPA for the same
reasons discussed supra with respect to representative claim 1.

Claims 2, 6, and 16-18
We consider next the Examiner’s rejection of claims 2, 6, and 16-18
as being unpatentable over Holm in view of AAPA, and further in view of
Kennel. Since Appellants’ arguments with respect to this rejection have
treated these claims as a single group which stand or fall together, we will
consider dependent claim 2 as the representative claim for this rejection. See
37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants essentially restate arguments previously made with respect
to Holm and AAPA that we have fully addressed supra (see Br. 33-36).
Regarding Appellants’ argument that Kennel does not teach a host bridge,
we note that both Holm and AAPA teach a host bridge, and the Examiner
does not rely on Kennel for its teaching of a host bridge (see Br. 35).
Specifically, the Examiner relies upon Kennel for its teaching of an
identifier for an I/O unit, as set forth in the rejection of claim 2 (see Answer
6). We agree with the Examiner that Appellants have failed to traverse the
I/O unit identifier teachings of Kennel. We note that the Court of Appeals
for the Federal Circuit has determined that one cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097,
231 USPQ 375, 380 (Fed. Cir. 1986). This reasoning is applicable here.
Therefore, we find that Holm, as modified by AAPA and Kennel, teaches
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and/or suggests all the features of representative claim 2. With respect to the
issue of motivation, we note that Appellants merely restate their previous
arguments that the base combination of Holm and AAPA is improper (see
Br. 37). We have fully addressed the issue of motivation to combine Holm
and AAPA supra.
Therefore, for at least the aforementioned reasons, we conclude the
Examiner has met the burden of presenting a prima facie case of
obviousness with respect to dependent claim 2. Accordingly, we will sustain
the Examiner’s rejection of dependent claim 2 as being unpatentable over
Holm in view of AAPA, and further in view of Kennel.
Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we have decided the appeal
with respect to the remaining claims in this group on the basis of the selected
claim alone. Therefore, we will sustain the Examiner’s rejection of claims 6
and 16-18 as being unpatentable over Holm in view of AAPA, and further in
view of Kennel, for the same reasons discussed supra with respect to
representative claim 2.
Claims 3-5
We consider next the Examiner’s rejection of claims 3-5 as being
unpatentable over Holm in view of AAPA, and further in view of Kennel
and Arndt. Since Appellants’ arguments with respect to this rejection have
treated these claims as a single group which stand or fall together, we will
select dependent claim 3 as the representative claim for this rejection. See
37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants argue that Arndt fails to cure the deficiencies of Holm,
AAPA, and Kennel (Br. 40-42). We find no deficiencies with Holm, AAPA,
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and Kennel, as discussed supra. With respect to the issue of motivation, we
note that Appellants merely restate their previous arguments that the base
combination of Holm and AAPA is improper (see Br. 41). We have fully
addressed the issue of motivation to combine Holm with AAPA supra.
Therefore, for at least the aforementioned reasons, we conclude the
Examiner has met the burden of presenting a prima facie case of
obviousness with respect to dependent claim 3. Accordingly, we will sustain
the Examiner’s rejection of dependent claim 3 as being unpatentable over
Holm in view of AAPA, and further in view of Kennel and Arndt.
Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we have decided the appeal
with respect to the remaining claims in this group on the basis of the selected
claim alone. Therefore, we will sustain the Examiner’s rejection of claims 4
and 5 as being unpatentable over Holm in view of AAPA, and further in
view of Kennel and Arndt for the same reasons discussed supra with respect
to representative claim 3.
Claims 11-13
We consider next the Examiner’s rejection of claims 11-13 as being
unpatentable over AAPA in view of Kennel. Since Appellants’ arguments
with respect to this rejection have treated these claims as a single group
which stand or fall together, we will consider dependent claim 11 as the
representative claim for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004). We further note that Appellants have not presented
any substantive arguments directed separately to the patentability of
dependent claims 11-13 (see Br. 42-43). In the absence of a separate
argument with respect to the dependent claims, those claims stand or fall
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with the representative independent claim. See In re Young, 927 F.2d at 590,
18 USPQ2d at 1091. See also 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Therefore, we will sustain the Examiner’s rejection of these claims for the
same reasons discussed supra with respect to claim 10.
DECISION
We have sustained the Examiner’s rejection of all claims on appeal.
Therefore, the decision of the Examiner rejecting claims 1-18 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

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