Ex Parte Bachrach

Board of Patent Appeals and Interferences

Jun 16, 2006

09471637 (B.P.A.I. Jun. 16, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte YUVAL BACHRACH
__________

Appeal No. 2006-1018
Application No. 09/471,637
___________

ON BRIEF
___________

Before THOMAS, KRASS and HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1 through 21, all of
which are pending in this application.

Invention
Appellant’s invention relates generally to a word-based interface system (132) with
adaptive speed for facilitating communication between the physical layer (PHY) (126)
and the medium access control sub-layer (MAC) (124) of the data link layer. The MAC

Appeal No. 2006-1018
Application No. 09/471,637

2
includes at least one PHY-to-MAC port (134) for receiving signals indicative of words
originated from the PHY in destination to the MAC. The MAC also includes a MAC-to-
PHY port (136) for transmitting signals indicative of words originated from the MAC in
destination to the PHY. The PHY-to MAC words include a slow mode wherein each
word received by the MAC from the PHY includes a transmit cycle field to indicate
whether the MAC is to provide data in a next MAC-to-PHY word transmitted by the
MAC to the PHY subsequent to the MAC receiving the slow mode PHY-to-MAC word.
Claim 1 is representative of the claimed invention and is reproduced as follows:
1. A MAC comprising:

at least one PHY-to-MAC port to receive signals indicative of PHY-to-MAC
words; and

at least one MAC-to-PHY port to transmit signals indicative of MAC-to-PHY
words;

wherein the PHY-to-MAC words include slow mode PHY-to-MAC words,
wherein a slow mode PHY-to-MAC word received by the MAC from a PHY
includes a transmit cycle field to indicate whether the MAC is to provide data in a
next MAC-to-PHY word transmitted by the MAC to the PHY subsequent to the
MAC receiving the slow mode PHY-to-MAC word.

References
The Examiner relies on the following references:
Boucher et al. (Boucher) 6,427,173 July 30, 2002
Filed on December 15, 1999

Findlater et al. (Findlater) 6,385,208 May 07, 2002
Filed on June 02, 1998

Rubin 4,525,795 June 25, 1985

Appeal No. 2006-1018
Application No. 09/471,637

3
Rejections At Issue
A. Claims 1, 2, 8, 9 and 15-16 stand rejected under 35 U.S.C. § 102 as being
anticipated by Boucher.
B. Claims 3, 4 and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of Boucher and Rubin.
C. Claims 5, 7, 10-14 and 17-21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Boucher and Findlater.
Rather than reiterating the arguments of Appellant and the Examiner, the opinion
refers to respective details in the Briefs1 and the Examiner’s Answer.2 Only those
arguments actually made by Appellant have been considered in this decision.
Arguments, which Appellant could have made but chose not to make in the Briefs have
not been taken into consideration. See 37 CFR 41.37(c)(1) (vii) (eff. Sept. 13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully considered the subject
matter on appeal, the Examiner’s rejections, the arguments in support of the rejections
and the evidence of anticipation and obviousness relied upon by the Examiner as support
for the rejections. We have likewise reviewed and taken into consideration Appellant’s
arguments set forth in the Briefs along with the Examiner’s rationale in support of the
rejections and arguments in the rebuttal set forth in the Examiner’s Answer.

1 Appellant filed a corrected Appeal Brief on May 03, 2005. Appellant filed a Reply Brief on October 21,
2005. Appellant filed a supplemental Appeal Brief on February 15, 2006.
2 The Examiner mailed an Examiner’s Answer on August 25, 2005. Examiner mailed a communication on
January 24, 2006 indicating that the Reply Brief has been entered and considered.
Appeal No. 2006-1018
Application No. 09/471,637

4
After full consideration of the record before us, we agree with the Appellant that
claims 1, 2, 8, 9 and 15-16 are not properly rejected under 35 U.S.C. § 102 as being
anticipated by Boucher. We further agree with the Appellant that claims 3, and 10-14 are
not properly rejected under 35 U.S.C. § 103 as being unpatentable over the combination
of Boucher and Rubin. Additionally, we agree with the Appellant that claims 5, 7, 10-14
and 17-21 are not properly rejected under 35 U.S.C. § 103 as being unpatentable over the
combination of Boucher and Findlater. Accordingly, we reverse the Examiner’s
rejections of claims 1-21 for the reasons set forth infra.

I. Under 35 U.S.C. § 102(e), is the Rejection of Claims 1, 2, 8, 9 15 and 16 as
Being Anticipated By Boucher Proper?

It is axiomatic that anticipation of a claim under § 102 can be found only if the
prior art reference discloses every element of the claim. See In re King, 801 F.2d 1324,
1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH
v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir.
1984).
With respect to the Boucher reference, Appellant argues at page 6 of the Appeal
Brief that Boucher does not teach a slow mode PHY-to-MAC word that includes a
transmit cycle field to indicate whether the MAC is to provide data in the next MAC-to-
PHY word transmitted by the MAC to the PHY subsequent to the MAC receiving the

Appeal No. 2006-1018
Application No. 09/471,637

5
slow mode PHY-to-MAC word. Appellant further expands on this argument in the Reply
Brief. Particularly, at page 2 of the Reply Brief, Appellant states:
“Specifically, for example as recited in independent
claim 1, PHY-to-MAC words include slow mode PHY-to-
MAC words received by the MAC layer (e.g., from layer 1
to layer 2) include a transmit cycle field to indicate whether
the MAC provides data in a next MAC-to-PHY word from
MAC to PHY (e.g., from layer 2 to layer 1). As a result,
the speed of packet exchanges between MAC layer and
PHY layer can be controlled by both layers via these kinds
of communications. It is respectfully submitted that these
limitations are absent from Boucher.”

Further, at page 3 of the Reply Brief, referring to various sections of Boucher
upon which the Examiner relied in the rejection, Appellant states:
“Although the cited sections mentions (sic) the
words of PHY and MAC layers, there is no disclosure or
suggestion within Boucher of communications between the
PHY layer and the MAC layer using the a transmit cycle
field to adapt to various speeds as set forth above.”

To determine whether claim 1 is anticipated, we must first determine the scope of
the claim. We note that claim 1 reads in part as follows:
“wherein the PHY-to-MAC words include slow mode
PHY-to-MAC words, wherein a slow mode PHY-to-MAC
word received by the MAC from a PHY includes a transmit
cycle field to indicate whether the MAC is to provide data
in the a MAC-to-PHY word transmitted by the MAC to the
PHY subsequent to the MAC receiving the slow mode
PHY-to-MAC word. ”

At page 4, lines 22-26, Appellants’ specification states:
“Communication of data across interface 132 is
word based. PHY 126 transmits a word to MAC 124 via
wires RxD 134 and MAC 124 transmits a word to PHY 126
via wires TxD 136. Words that are transmitted from PHY
126 to MAC 124 are referred to as PtM (PHY-to-MAC)
Appeal No. 2006-1018
Application No. 09/471,637

6
words, and words that are transmitted from MAC 124 to
PHY 126 are referred to as MtP (MAC-to-PHY) words.”

Further, at page 5, lines 13-20, Appellant’s specification states:

“Bit position number 9 in Fig. 2 is the Tx Cyc
(Transmit Cycle) field to indicate whether MAC 124 is
requested by PHY 126 to send data in the next MtP word.
For the particular embodiment of Fig. 2, Tx_Cyc= 1
indicates that PHY 126 is ready for data from MAC 124,
whereas Tx_Cyc= 0 indicates that PHY 126 is not ready for
data from MAC 124. In this way, various data link speeds
may be supported without changing the clock signal
frequency on CLK 138. Also, the transmit and receive
speeds may be different. Furthermore, even when there is
no frame in progress, the Tx_Cyc field may be used by
PHY 126 to communicate to MAC 124 the data link
speed.”

Additionally, at page 6, lines 9-13, Appellant’s specification states:

“For the Slow mode, the data rate at which PHY 126 can
transmit on the medium is less than the rate at which MAC
124 can generate data. Consequently the Tx_Cyc field (bit
position 9 in Fig. 3) is used in the Slow mode PtM data
word because PHY 126 is not always ready to receive data
from MAC 124.”

Thus, the claim does require a slow mode PHY-to-MAC word that includes a
transmit cycle field to indicate whether the MAC is to provide data in the next MAC-to-
PHY word transmitted by the MAC to the PHY subsequent to the MAC receiving the
slow mode PHY-to-MAC word.
Now, the question before us is what Boucher would have taught to one of
ordinary skill in the art? To answer this question, we find the following facts:
1. At column 7, line 34- column 8, line 37, Boucher states the following:
When a message packet or frame is received 47 from a network by the
CPD, it is first validated by a hardware assist. This includes determining the
protocol types of the various layers, verifying relevant checksums, and
Appeal No. 2006-1018
Application No. 09/471,637

7
summarizing 57 these findings into a status word or words. Included in these
words is an indication whether or not the frame is a candidate for fast-path data
flow. Selection 59 of fast-path candidates is based on whether the host may
benefit from this message connection being handled by the CPD, which includes
determining whether the packet has header bytes indicating particular protocols,
such as TCP/IP or SPX/IPX for example. The small percent of frames that are not
fast-path candidates are sent 61 to the host protocol stacks for slow-path protocol
processing. Subsequent network microprocessor work with each fast-path
candidate determines whether a fast-path connection such as a TCP or SPX CCB
is already extant for that candidate, or whether that candidate may be used to set
up a new fast-path connection, such as for a TTCP/IP transaction. The validation
provided by the CPD provides acceleration whether a frame is processed by the
fast-path or a slow-path, as only error free, validated frames are processed by the
host CPU even for the slow-path processing.
All received message frames which have been determined by the CPD
hardware assist to be fast-path candidates are examined 53 by the network
microprocessor or INIC comparator circuits to determine whether they match a
CCB held by the CPD. Upon confirming such a match, the CPD removes lower
layer headers and sends 69 the remaining application data from the frame directly
into its final destination in the host using direct memory access (DMA) units of
the CPD. This operation may occur immediately upon receipt of a message
packet, for example when a TCP connection already exists and destination buffers
have been negotiated, or it may first be necessary to process an initial header to
acquire a new set of final destination addresses for this transfer. In this latter
case, the CPD will queue subsequent message packets while waiting for the
destination address, and then DMA the queued application data to that
destination.
A fast-path candidate that does not match a CCB may be used to set up a
new fast-path connection, by sending 65 the frame to the host for sequential
protocol processing. In this case, the host uses this frame to create 51 a CCB,
which is then passed to the CPD to control subsequent frames on that connection.
The CCB, which is cached 67 in the CPD, includes control and state information
pertinent to all protocols that would have been processed had conventional
software layer processing been employed. The CCB also contains storage space
for per-transfer information used to facilitate moving application-level data
contained within subsequent related message packets directly to a host application
in a form available for immediate usage. The CPD takes command of connection
processing upon receiving a CCB for that connection from the host.
As shown more specifically in FIG. 4A, when a message packet is received
from the remote host 22 via network 25, the packet enters hardware receive logic
32 of the CPD 30, which checksums headers and data, and parses the headers,
creating a word or words which identify the message packet and status, storing the
headers, data and word temporarily in memory 60. As well as validating the
packet, the receive logic 32 indicates with the word whether this packet is a
candidate for fast-path processing. FIG. 4A depicts the case in which the packet is
Appeal No. 2006-1018
Application No. 09/471,637

8
not a fast-path candidate, in which case the CPD 30 sends the validated headers
and data from memory 60 to data link layer 36 along an internal bus for
processing by the host CPU, as shown by arrow 56. The packet is processed by
the host protocol stack 44 of data link 36, network 38, transport 40 and session 42
layers, and data (D) 63 from the packet may then be sent to storage 35, as shown
by arrow 65.

2. At column 10, lines 19-34, Boucher states the following:
A simplified intelligent network interface card (INIC) 150 is shown in
FIG. 6 to provide a network interface for a host 152. Hardware logic 171 of the
INIC 150 is connected to a network 155, with a peripheral bus (PCI) 157
connecting the INIC and host. The host 152 in this embodiment has a TCP/IP
protocol stack, which provides a slow-path 158 for sequential software processing
of message frames received from the network 155. The host 152 protocol stack
includes a data link layer 160, network layer 162, a transport layer 164 and an
application layer 166, which provides a source or destination 168 for the
communication data in the host 152. Other layers which are not shown, such as
session and presentation layers, may also be included in the host stack 152, and
the source or destination may vary depending upon the nature of the data and may
actually be the application layer.

3. At column 26, lines 52-64, Boucher states the following:

Next, a TCP/IP packet is received from the network line 210 via network
connector 2101 and Physical Layer Interface (PHY) 2100. PHY 2100 supplies
the packet to MAC 402 via a Media Independent Interface (MII) parallel bus
2109. MAC 402 begins processing the packet and asserts a "start of packet"
signal on line 2213 indicating that the beginning of a packet is being received.
When a byte of data is received in the MAC and is available at the MAC outputs
2215, MAC 402 asserts a "data valid" signal on line 2214. Upon receiving the
"data valid" signal, the packet synchronization sequencer 2201 instructs the data
synchronization buffer 2200 via load signal line 2222 to load the received byte
from data lines 2215.

With the above discussion in mind, we find that Boucher does not teach the
invention as claimed. Particularly, we find that Boucher teaches an intelligent network
interface card (INIC) that provides a network interface for data communication for a host
computer. The INIC determines whether received message packets should be forwarded
for past path processing or slow path processing based upon a comparison between the
Appeal No. 2006-1018
Application No. 09/471,637

9
header information in each data packet and the communication control block (CCB) data.
Boucher also teaches that each packet contains words that are received at the Physical
link layer, communicated to the MAC layer for processing, and subsequently output to
the communication medium. Hence, it is our finding that one of ordinary skill in the art
would have duly recognized from Boucher’s teachings that the disclosed comparison
between the CCB data and the header information in each received packet/word to
determine which path the packet should be forwarded to is not equivalent to Appellant’s
claimed PHY-to-MAC word, which includes a transmit cycle field to in a slow mode
PHY-to-MAC. Further, Boucher does not teach a MAC-to-PHY communication, as
called for by the claim. Consequently, we find error in the Examiner’s stated position,
which concludes that Boucher teaches the claimed limitation of a slow mode PHY-to-
MAC word that includes a transmit cycle field to indicate whether the MAC is to provide
data in the next MAC-to-PHY word transmitted by the MAC to the PHY subsequent to
the MAC receiving the slow mode PHY-to-MAC word.
Therefore, we will not sustain the Examiner’s rejection of claims 1, 2, 8, 9, 15 and
16 under 35 U.S.C. § 102(e).

II. Under 35 USC 103, is the Rejection of Claims 3, 4 and 6 as Being
Unpatentable over the combination of Boucher and Rubin Proper?

In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden
of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by showing
that some objective teaching in the prior art or knowledge generally available to one of
Appeal No. 2006-1018
Application No. 09/471,637

10
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the Appellants. Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ
at 788.
An obviousness analysis commences with a review and consideration of all the
pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal,
the Board must necessarily weigh all of the evidence and argument.” Oetiker, 977 F.2d
at 1445, 24 USPQ2d at 1444. “[T]he Board must not only assure that the requisite
findings are made, based on evidence of record, but must also explain the reasoning by
which the findings are deemed to support the agency’s conclusion.” In re Lee, 277 F.3d
1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to dependent claims 3, 4 and 6, Appellant argues at page 7of the
Appeal Brief that Boucher does not teach a slow mode PHY-to-MAC word that includes
a transmit cycle field to indicate whether the MAC is to provide data in the next MAC-to-
PHY word transmitted by the MAC to the PHY subsequent to the MAC receiving the
slow mode PHY-to-MAC word. Appellant further argues that Rubin does not cure these
deficiencies.
We agree with the Appellant that the combination of Boucher and Rubin does not
render the cited claims obvious. As noted in the discussion of claim 1 above, we find that
Boucher does not teach a slow mode PHY-to-MAC word that includes a transmit cycle
field to indicate whether the MAC is to provide data in the next MAC-to-PHY word
transmitted by the MAC to the PHY subsequent to the MAC receiving the slow mode
Appeal No. 2006-1018
Application No. 09/471,637

11
PHY-to-MAC word. We find that the Rubin reference does not teach that limitation
either. The Rubin reference is merely relied upon for its teaching of words that are 12
bits wide. Thus, the combination of Boucher and Rubin does not teach a slow mode
PHY-to-MAC word that includes a transmit cycle field to indicate whether the MAC is to
provide data in the next MAC-to-PHY word transmitted by the MAC to the PHY
subsequent to the MAC receiving the slow mode PHY-to-MAC word.
After consideration of the record before us, we find that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary
skill in the art the invention as set forth in claims 3, 4 and 6. Accordingly, we will not
sustain the Examiner’s rejection of claims 3, 4 and 6.

III. Under 35 U.S.C. § 103, is the Rejection of Claims 5, 7, 10-14 and 17-21
as Being Unpatentable over the combination of Boucher and Findlater Proper?

With respect to dependent claims 5, 7, 10-14 and 17-21, Appellant argues at page 8
of the Appeal Brief that Boucher does not teach a slow mode PHY-to-MAC word that
includes a transmit cycle field to indicate whether the MAC is to provide data in the next
MAC-to-PHY word transmitted by the MAC to the PHY subsequent to the MAC
receiving the slow mode PHY-to-MAC word. Appellant further argues that Findlater
does not cure these deficiencies.
We agree with the Appellant that the combination of Boucher and Findlater does
not render the cited claims obvious. As noted in the discussion of claim 1 above, we find
that Boucher does not teach a slow mode PHY-to-MAC word that includes a transmit
cycle field to indicate whether the MAC is to provide data in the next MAC-to-PHY
Appeal No. 2006-1018
Application No. 09/471,637

12
word transmitted by the MAC to the PHY subsequent to the MAC receiving the slow
mode PHY-to-MAC word. We find that the Findlater reference does not teach that
limitation either. The Findlater reference is merely relied upon for its teaching of PHY-
to-MAC words that have data fields in various bit positions. Thus, the combination of
Boucher and Findlater does not teach a slow mode PHY-to-MAC word that includes a
transmit cycle field to indicate whether the MAC is to provide data in the next MAC-to-
PHY word transmitted by the MAC to the PHY subsequent to the MAC receiving the
slow mode PHY-to-MAC word.
After consideration of the record before us, we find that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary
skill in the art the invention as set forth in claims 5, 7, 10-14 and 17-21. Accordingly, we
will not sustain the Examiner’s rejection of claims 5, 7, 10-14 and 17-21.

CONCLUSION
In view of the foregoing discussion, we have not sustained the Examiner’s
decision rejecting claims 1, 2, 8, 9, 15 and 16 under 35 U.S.C. § 102. We have also not
sustained the Examiner’s decision rejecting claims 3, 4-7, 10-14, and 17-21 under 35
U.S.C. § 103. Therefore, we reverse.

Appeal No. 2006-1018
Application No. 09/471,637

13
REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
)
ERROL A. KRASS )
Administrative Patent Judge ) BOARD OF PATENT
) APPEALS
) AND INTERFERENCES
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )

JRH/kis
Appeal No. 2006-1018
Application No. 09/471,637

14
BLAKELY, SOKOLOFF, TAYLOR & ZAFMANN, L.L.P.
12400 WILSHIRE BOULEVARD
LOS ANGELES, CA 90025-1026