Ex parte Bakke et al.

Board of Patent Appeals and Interferences

Sep 24, 2001

08703496 (B.P.A.I. Sep. 24, 2001)

The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board.
Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRIAN E. BAKKE, RONALD L. BILLAU,
LEE D. CLEVELAND and WILLIAM S. GARTMANN
_____________
Appeal No. 1999-0261
Application 08/703,496
______________
ON BRIEF
_______________
Before JERRY SMITH, RUGGIERO and LEVY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-20, which are all of the claims pending in the
present application. Claim 21 has been canceled. An
amendment filed February 9, 1998 after final rejection was
approved for entry by the Examiner.
The claimed invention relates to a method and apparatus
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for preventing data corruption caused by a device connection
transition on an active data communication bus. A shutdown
signal is transmitted from a bus initiator over the bus to a
power controller while bus communication is paused permitting
communication only by the bus initiator. After a connection
transition of an electrical device in the device slot
corresponding to the received shutdown signal, power is
restored to the device slot after receipt of a power reset
signal transmitted from the bus initiator. Communication on
the data bus by all peripherals is again permitted after
release of the data bus from the pause condition by the bus
initiator.
Claim 1 is illustrative of the invention and reads as
follows:
1. A method of device connection transition on an
active data communication bus, said method
comprising the steps of:
pausing communication on the data communication
bus such that only communication by a first
electrical device is allowed over the data
communication bus;
following said pausing of communication on said
data communication bus, transmitting a shutdown
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signal over data lines within said data
communication bus from said first electronic device
to a third electronic device, said shutdown signal
instructing said third electronic device to
eliminate power to a device slot; and
releasing the data communication bus from being
paused such that all communication on the data
communication bus by electrical devices is allowed
after a connection transition of a second electrical
device in said device slot.
The examiner relies upon the following references as
evidence of obviousness:
Herrig et al. (Herrig) 4,835,737 May 30,
1989
Parrett 5,586,271 Dec. 17,
1996
(filed Sep. 27, 1994)
Claims 1-20 stand finally rejected under 35 U.S.C. § 103.
As evidence of obviousness, the Examiner offers Herrig alone
with respect to claims 1-3, 6-9, 12-14, and 16-20, and adds
Parrett to Herrig with respect to claims 4, 5, 10, 11, and 15.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Brief (Paper No. 11) and
Answer (Paper No. 12) for the respective details.
OPINION
We have carefully considered the subject matter on
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Application No. 08/703,496
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appeal, the rejection advanced by the Examiner, the arguments
in support of the rejection and the evidence of obviousness
relied upon by the Examiner as support for the rejection. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, Appellants’ arguments set forth in the
Brief along with the Examiner’s rationale in support of the
rejection and arguments in rebuttal set forth in the
Examiner’s Answer.
It is our view, after consideration of the record before
us, 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 obviousness of the invention as set forth in
claims 1-20. Accordingly, we reverse.
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 is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
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Application No. 08/703,496
5
1,
17-18, 148 USPQ 459, 467 (1966), and to provide a reason why
one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed.
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Application No. 08/703,496
6
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to each of the appealed independent claims
1, 6, and 13, the Examiner proposes to modify the circuit
board module removal and insertion system disclosed by Herrig.
In the Examiner’s analysis, it is suggested (Answer, page 3)
that Herrig discloses the claimed invention except for the
permitting of only a first electrical device to communicate
over a bus during the pausing of data communications over the
bus. Nevertheless, the Examiner asserts the obviousness to
the skilled artisan “...to have a control circuit to provide
the efficient communication control on the bus during the
connection transition of a second device.” (Id).
In response, Appellants assert several arguments in
support of their position that the Examiner has not
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7
established proper motivation for the proposed combination of
references so as to set forth a prima facie case of
obviousness. After careful review of the applied prior art
references in light of the arguments of record, we are in
agreement with Appellants’ position as stated in the Brief.
As argued by Appellants (Brief,
page 5), the Examiner has pointed to no disclosure in Herrig
that would suggest any support for the Examiner’s assertion
that Herrig’s system could be modified to allow communication
by only one device while bus communication is paused. Our
interpretation of the disclosure of Herrig coincides with that
of Appellants, i.e., when bus communication is paused, the
generation of required bus communication clock signals is
stopped, thereby inhibiting all communication over the bus
(Herrig, column 6, lines 1-9). We find no evidence provided
by the Examiner that would support the obviousness to the
skilled artisan of making the modification suggested by the
Examiner. The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
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desirability of the modification. In re Fritch, 972 F. 2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
We are further of the opinion that even assuming,
arguendo, that proper motivation were established for the
Examiner’s proposed modification of Herrig, the resulting
system would fall far short of meeting the specific
requirements of the claims on
appeal. As pointed out by Appellants (Brief, page 6), the
transmission of a control signal by actuation of a switch on
the circuit board module in Herrig occurs before the pausing
of bus communication not after the bus communication pausing
as set forth in the appealed claims. Further, we find in
Herrig no transmission of a shutdown signal from a first
device to a third device to eliminate power to a slot assigned
for the removal or insertion of a second device. In order for
us to sustain the Examiner’s rejection under 35 U.S.C. § 103,
we would need to resort to speculation or unfounded
assumptions or rationales to supply deficiencies in the
factual basis of the rejection before us. In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
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389 U.S. 1057 (1968), rehearing denied, 390 U.S. 1000 (1968).
Accordingly, since the Examiner has not established a prima
facie case of obviousness, the rejection of independent claims
1, 6, and 13, and claims 2, 3, 7-9, 12, 14, and 16-20
dependent thereon, based on Herrig is not sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103
rejection of dependent claims 4, 5, 10, 11, and 15 in which
the Parrett reference is added to Herrig, we do not sustain
this rejection as well. It is apparent from the Examiner’s
analysis
(Answer, pages 4 and 5) that Parrett is relied on solely to
address the claimed SCSI and bus initiator features. We find
nothing, however, in the disclosure of Parrett which would
overcome the innate deficiencies of Herrig discussed supra.
In conclusion, since the Examiner has not established a
prima facie case of obviousness, the 35 U.S.C. § 103 rejection
of independent claims 1, 6, and 13, and claims 2-5, 7-12, and
14-20 dependent thereon, cannot be sustained. Therefore, the
decision of the Examiner rejecting claims 1-20 is reversed.
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Application No. 08/703,496
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REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
jfr/vsh
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Application No. 08/703,496
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ANDREW J. DILLON
FELSMAN, BRADLEY, GUNTER & DILLON, LLP
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