Ex Parte Askar

Board of Patent Appeals and Interferences

Mar 4, 2008

10093253 (B.P.A.I. Mar. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TAHSIN ASKAR
____________________

Appeal 2007-3249
Application 10/093,2531
Technology Center 2100
____________________

Decided: March 4, 2008
____________________

Before LANCE LEONARD BARRY, ALLEN R. MACDONALD, and
JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1 through 18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Filed Mar. 07, 2002. CIP of 09/978,534 filed Oct. 15, 2001. The real party
in interest in this appeal is Advanced Micro Devices, Inc.
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The Invention
According to Appellant, the invention is a method and apparatus for
handling split response transactions (e.g. incomplete responses) in a
peripheral interface of an input/output node of a computer system. (Spec. 4.)
As depicted in Figures 1 through 3, upon receiving a packet command from
an upstream node (10) via a packet interconnect (50), the peripheral
interface (150) of the I/O node (20) forwards the packet command to a
respective virtual channel (390). (Id. 13-14.) The interface (150) then causes
a bus cycle of the packet command to be initiated on a peripheral bus (560),
such as a peripheral component interconnect (PCI) or extended PCI (PCI-X).
If the interface (150) receives a split response from the peripheral device
(565) targeted by the bus cycle, it stores the packet command in a FIFO
buffer (480). The interface subsequently removes the packet command from
the buffer upon receiving a split completion response from the peripheral
device (565) targeted by the bus cycle. (Id. 8, 21-23.)
Independent claim 1 is illustrative of the invention, and it reads as
follows:
1. A method for handling incomplete responses in a peripheral
interface of an input/output node of a computer system, said method
comprising:

receiving via a packet interconnect, packet command from an
upstream node, wherein said packet command belongs to a respective virtual
channel of a plurality of virtual channels;

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causing a bus cycle corresponding to said packet command to be
initiated on a peripheral bus;

storing said packet command in a buffer in response to receiving a
split response from a target of said bus cycle; and

removing said packet command from said buffer in response to
receiving a split completion response from said target of said bus cycle.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Lackey Jr. US 6,694,397 B2 Feb. 17, 2004
(filed Mar. 30, 2001)
Potter US 6,757,768 B1 Jun. 29, 2004
(filed May 17, 2001)

The Examiner rejects the claims on appeal as follows:
Claims 1 through 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Potter and Lackey.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Potter
1.A. Potter discloses a system for maintaining order among requests
issued over a split transaction bus from a split transaction bus controller.
(Col. 4, ll. 8-14.)
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1.B. As depicted in Figure 1, the disclosed system includes a
sending node (102) that generates a data packet or packet command, which
is transmitted to an intermediate node (200) via a system bus (202). Upon
receiving the packet, the intermediate node (202) parses it, renders a
forwarding decision on the packet, and subsequently transmits the packet to
an output port in destination to the receiving node (106). (Col. 4, ll. 47-58.)
2. As shown in Figure 2, the intermediate node (200) includes an
external I/O bus (300), which may be a PCI2 bus coupled to PCI devices or a
split transaction/HPT bus coupled to HPT devices. (Col. 5, ll. 19-29.)
Lackey
3. Lackey discloses a request queuing system for a peripheral
component interface (PCI) bridge. (Col. 1, ll. 1-8.) As depicted in Figure 1, a
bus bridge (110) receives read and write requests from devices 106 and 108
located on a PCI buses 102 and 108 respectively. The bus bridge (110)
includes a FIFO buffer for queuing the received requests. (Col. 2, ll. 43-57;
col. 3, ll. 51-52.)
4. The bridge (110) includes a Retry List (415) for storing
requests that received incomplete responses, Retry responses or those
responses that were disconnected partway through the transaction. The
Retry List also stores split completion requests. (Col. 4, ll. 3-11, ll. 47-53.)

2 Appellant admits that PCI buses can handle PCI transactions initiated by
bus cycles. (App. Br. 10.)
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5. Requests that received an incomplete response are stored on the
Retry list. Once retried and completed, they are removed from the Retry
List. (Col. 5, ll. 5-8.)

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
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(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”).
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41(2007)).
“One of the ways in which a patent's subject matter can be proved obvious is
by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent's claims.”
KSR, 127 S. Ct. at 1742.
Discussing the obviousness of claimed combinations of elements of
prior art, KSR explains:
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. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
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KSR, 127 S. Ct. at 1740. Where the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that there was “an apparent reason to combine the known elements
in the fashion claimed.” KSR, 127 S. Ct. at 1741. Such a showing requires
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741 (quoting In re
Kahn, 441 F.3d 977, 987(Fed. Cir. 2006)).
The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art. KSR, 127 S. Ct. at 1740-41. See also Dystar Textilfarben GmbH v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2007).
We note our reviewing court has recently reaffirmed that:
[A]n implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or process
is universal—and even common-sensical—we have held that there
exists in these situations a motivation to combine prior art references
even absent any hint of suggestion in the references themselves. In
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such situations, the proper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining
the prior art references.

Leapfrog, 485 F.3d at 1162 (holding it “obvious to combine the Bevan
device with the SSR to update it using modern electronic components in
order to gain the commonly understood benefits of such adaptation, such as
decreased size, increased reliability, simplified operation, and reduced
cost”).
Also, a reference may suggest a solution to a problem it was not
designed to solve and thus does not discuss. KSR, 127 S. Ct. at 1742
(“Common sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle. . . . A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
The prior art relied on to prove obviousness must be analogous art.
As explained in Kahn,
the ‘analogous-art’ test . . . has long been part of the primary
Graham analysis articulated by the Supreme Court. See Dann
[v. Johnston,] 425 U.S. [219,] 227-29 (1976), Graham, 383
U.S. at 35. The analogous-art test requires that the Board show
that a reference is either in the field of the applicant's endeavor
or is reasonably pertinent to the problem with which the
inventor was concerned in order to rely on that reference as a
basis for rejection. In re Oetiker, at 1447. References are
selected as being reasonably pertinent to the problem based on
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the judgment of a person having ordinary skill in the art. Id.
(“[I]t is necessary to consider ‘the reality of the
circumstances,’—in other words, common sense—in deciding
in which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the
inventor.” (quoting In re Wood, 599 F.2d 1032 (C.C.P.A.
1979))).
Kahn, 441 F.3d at 986-87. See also In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992) (“[a] reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.”).
In view of KSR’s holding that “any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed,” 127 S.
Ct. at 1742 (emphasis added), it is clear that the second part of the
analogous-art test as stated in Clay, supra, must be expanded to require a
determination of whether the reference, even though it may be in a different
field from that of the inventor's endeavor, is one which, because of the
matter with which it deals, logically would have commended itself to an
artisan’s (not necessarily the inventor’s) attention in considering any need or
problem known in the field of endeavor. Furthermore, although under KSR
it is not always necessary to identify a known need or problem as a
motivation for modifying or combining the prior art, it is nevertheless
always necessary that the prior art relied on to prove obviousness be
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analogous. See KSR, 127 S. Ct. at 1739. (“The Court [in United States v.
Adams, 383 U.S. 39, 40 (1966)] recognized that when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”) (emphasis added). See also
Sakraida, 425 U.S. at 280 (“Our independent examination of that evidence
persuades us of its sufficiency to support the District Court's finding ‘as a
fact that each and all of the component parts of this patent . . . were old and
well-known throughout the dairy industry long prior to the date of the filing
of the application for the Gribble patent.’”).

ANALYSIS
Independent claim 1 requires in relevant part upon receiving a packet
command from an upstream node, initiating on a peripheral bus a bus cycle
corresponding to the packet. (App. Br., Appendix A.) Appellant argues that
neither Potter nor Lackey teaches that limitation. (App. Br. 10-11.) Further,
Appellant argues that there is insufficient rationale for combining the cited
references. (Id. 12.) Therefore, Appellant submits that the combination of
Potter and Lackey does not render claim 1 unpatentable. (Id. 13.)
In response, the Examiner avers that Potter teaches the cited limitation
as a peripheral bus that receives a packet command issued from an upstream
node. The Examiner therefore concludes that the combination of Potter and
Lackey renders the claim unpatentable. (Ans. 8-9.)
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The pivotal issue before us is whether the combined disclosures of
Potter and Lackey teach initiating on peripheral bus a bus cycle
corresponding to a packet command issued from an upstream node, as
recited in independent claim 1? Further, would one of ordinary skill in the
art have found sufficient rationale to combine the references in the manner
suggested by the Examiner? We answer both of these questions in the
affirmative.
As set forth in the Findings of Fact section above, Potter discloses
sending to a peripheral bus a packet command received from an upstream
node. (FF 1.B.) Potter also teaches that the peripheral bus can be of a PCI
type or HPT type. (FF. 2.) One of ordinary skill in the art would readily
recognize, as admitted by Appellant,3 that the peripheral bus handles PCI
transactions initiated by a bus cycle when the peripheral bus is of a PCI type.
Therefore, the ordinarily skilled artisan would readily appreciate from
Potter’s disclosure that a bus cycle corresponding to the packet command
sent by the upstream sending node is initiated on the peripheral bus when it
is of a PCI type.
Further, Lackey discloses storing in a Retry List split completion
requests or those requests that received incomplete responses such as those
responses disconnected partway through the transaction. (FF. 4.)
Additionally, Lackey discloses that these incomplete and split responses are
removed from the Retry List once they are retried and completed. (FF 5.)

3 See supra note 2.
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One of ordinary skill in the art would aptly recognize that Potter’s apparatus,
taken in combination with Lackey’s disclosure, would have predictably
resulted 4 in an intermediate node that initiates on a PCI-type bus a bus cycle
corresponding to a packet command, which is stored in a Retry List upon
receiving a split response, and which is subsequently removed from the List
upon receiving a split completion response from the bus cycle. Thus, on the
record before us, we conclude that the ordinarily skilled artisan would have
found sufficient rationale to combine Potter’s and Lackey’s prior art
elements, as they are disclosed to perform known functions that would
achieve a predictable result.5 It follows that Appellant has not shown that the
Examiner erred in finding that the combination of Potter and Lackey renders
independent claim 1 unpatentable.
Regarding the rejection of claims 2 through 18, Appellant repeats in
great substance the same arguments proffered for claim 1. We have already
addressed these arguments in the discussion of claim 1 above, and we do not
agree with Appellant. It follows that Appellant has not shown that the

4 [The Supreme Court has held that in analyzing the obviousness of
combining elements, a court need not find specific teachings, but rather may
consider "the background knowledge possessed by a person having ordinary
skill in the art" and "the inferences and creative steps that a person of
ordinary skill in the art would employ." See KSR Int’l v. Teleflex Inc., 127
S. Ct. 1727, 1740-41 (2007). To be nonobvious, an improvement must be
"more than the predictable use of prior art elements according to their
established functions." Id. at 1740.

5 Id.
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Examiner erred in finding that the combination of Potter and Lackey renders
claim 2 through 18 unpatentable. See 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
Appellant has not shown that the Examiner failed to establish that:
Claims 1 through 18 are unpatentable under 35 U.S.C. § 103(a) over
the combination of Potter and Lackey.
DECISION
We affirm the Examiner’s decision rejecting claims 1 through 18.
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

pgc

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