Ex parte Barnes et al.

Board of Patent Appeals and Interferences

Jul 31, 2000

08226224 (B.P.A.I. Jul. 31, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHERIE C. BARNES and DAVID J. WIERBOWSKI
____________
Appeal No. 1996-1243
Application No. 08/226,224
____________
ON BRIEF
____________
Before HAIRSTON, JERRY SMITH and BARRETT, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 27-30, 32, 33,
35-43 and 45-50, which constituted all the claims in the
application. An amendment was filed concurrently with the
Notice of Appeal on July 20, 1995. This amendment sought to
add new claims 51-55 to the application, but the amendment was
denied entry by the examiner [Paper #27]. Appellants filed a
petition to the Commissioner on September 25, 1995 to require
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Application No. 08/226,224
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entry of the amendment by the examiner. This petition was
granted on February 17, 1999 [Paper #32]. Accordingly, claims
27-30, 32, 33, 35-43 and 45-55 are now the claims on appeal in
this application.
The disclosed invention pertains to the field of shared
resources among a plurality of users. Competing requests by
users for shared resources which may be “owned” by other users
can cause conditions of deadlock to occur. A lock wait matrix
is created which represents a hierarchy of transactions
waiting to access a resource. The invention is concerned with
reducing the search time through such a lock wait matrix in
determining potential deadlock conditions.
Representative claim 27 is reproduced as follows:
27. A method of reducing search time through a lock wait
matrix representing a hierarchy of transactions waiting to
access a resource, each of said transactions which waits on
another transaction descends from said other transaction in
said hierarchy, said method comprising the computer
implemented steps of:
searching in said hierarchy a path of transactions including a
parent transaction and all descendants of said parent
transaction, and recording transactions encountered in the
search, said parent transaction not being deadlocked; and
subsequently searching, generally downwardly through said
hierarchy, another path of transactions emanating from a
transaction of the first said path, recording transactions
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encountered in the search of said other path, comparing
transactions encountered in the search of said other path to
said parent transaction, and terminating the searching and
recording of transactions of said other path before an end of
said other path when encountering said parent transaction.
The examiner relies on the following references:
Weinblatt 3,579,194 May 18, 1971
Trinchieri 4,224,664 Sep. 23, 1980
R. Agrawal et al. (Agrawal), “The Performance of Alternative
Strategies for Dealing with Deadlocks in Database Management
Systems,” IEEE Transactions On Software Engineering, Vol. SE-
13, No. 12, December 1987, pages 1349-1363.
Claims 27-30, 32, 33, 35-43 and 45-55 stand rejected
under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the subject matter
of the invention. Claims 27-30, 32, 33, 35-43 and 45-55 also
stand rejected under 35 U.S.C. § 103. As evidence of
obviousness the examiner offers Trinchieri in view of Agrawal
and further in view of Weinblatt.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
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Application No. 08/226,224
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We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the prior art rejection. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the claims on appeal recite the invention in a manner
which complies with the requirements of 35 U.S.C. § 112. We
are also of the view 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 the appealed claims. Accordingly,
we reverse.
We consider first the rejection of all appealed claims
under the second paragraph of 35 U.S.C. § 112. With respect
to independent claim 27 [appendix version], the examiner
asserts the lack of antecedent basis for the phrase “the first
said path” in line 14 of the claim and the phrase “said other
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path” in line 15 of the claim [answer, page 4]. With respect
to each of the independent claims on appeal, the examiner
asserts that the claims are missing essential elements of the
invention and do not properly correspond to the disclosed
invention [id., pages 4-5].
Appellants respond that the appealed claims correspond to
what they consider to be their invention and that there is no
ambiguity or indefiniteness in the claim language [brief, page
5; reply brief, page 1].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co., v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
The lack of antecedent basis objections of the examiner
are clearly improper. It is not always necessary that literal
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support be found for proper antecedent basis. The only
question is whether the artisan would understand what is
covered by the claim. As appellants point out in the reply
brief, “the first said path” can only refer to “a path of
transactions” in line 7 of claim 27 [appendix version], and
the “said other path” is clearly referring to the “another
path” in line 13. There is no other reasonable way for these
phrases to be interpreted. Therefore, since the artisan would
understand what is covered by the objected to phrases, these
phrases are not indefinite under 35 U.S.C. § 112.
We also do not agree with the examiner’s other finding
that the claims are incomplete. The examiner has essentially
decided that he will determine what appellants’ invention is
and the amount of detailed limitations which will be necessary
to support the disclosed invention. The examiner’s objection
goes to the breadth of the claimed invention rather than to
the indefiniteness of the claimed invention. It is up to
appellants to decide what portion of their disclosed invention
they wish to include in the claims. The claimed invention can
typically be as broad as the prior art permits. Therefore, it
is inappropriate for the examiner to seek to narrow the
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claimed invention by forcing appellants to amend the claims to
additionally refer to graphs or cycles.
In summary, we do not agree with any of the examiner’s
objections of the claims, and we do not sustain the rejection
of all claims under 35 U.S.C. § 112.
We now consider the rejection of claims 27-30, 32, 33,
35-43 and 45-55 under 35 U.S.C. § 103. 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. 1, 17, 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.
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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 Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
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). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellants have been considered in this decision.
Arguments which appellants could have made but chose not to
make in the brief have not been considered [see 37 CFR
§ 1.192(a)].
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The examiner reads exemplary claim 27 on various portions
of the three applied prior art references [answer, pages 5-6].
The examiner broadly concludes that it would have been obvious
to the artisan to combine these various features of the
applied prior art. Appellants note the related features of
each of the applied references, but appellants argue that the
references, either alone or in combination, do not teach or
suggest the specific steps and means recited in each of the
independent claims on appeal [brief, pages 6-9]. The
examiner’s response appears to be a contention that the same
results and goals of the claimed invention are achieved in
Weinblatt which establishes obviousness under 35 U.S.C. § 103
[answer, pages 8-13]. Appellants respond that the specific
functions recited in the appealed claims are not performed by
the applied prior art even if a similar result is achieved
[reply brief].
We agree with the position argued by appellants. It
would be enough to point out that the examiner has simply
taken disparate teachings from three prior art references and
improperly combined them in an effort to reconstruct the
invention in hindsight. In other words, the examiner has not
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really provided a cogent rationale for combining the disparate
teachings of the three applied references. More importantly,
however, the disclosure of Weinblatt does not teach or suggest
the specific steps and means of the claimed invention. Even
if Weinblatt achieved the exact same result as the claimed
invention, a contention which we do not agree with, Weinblatt
does not achieve this result in the manner recited in the
appealed claims. Appellants have indicated how their process
differs from Weinblatt in the reply brief, and the examiner
has offered no response. Since we agree with appellants that
the combined teachings of the applied prior art do not suggest
the obviousness of the claimed invention within the meaning of
35 U.S.C. § 103, we do not sustain the examiner’s rejection of
the appealed claims on this basis.
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In conclusion, we have not sustained either of the
examiner’s rejections of the claims. Therefore, the decision
of the examiner rejecting claims 27-30, 32, 33, 35-43 and 45-
55 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
js/jg
Appeal No. 1996-1243
Application No. 08/226,224
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Arthur J. Samodovitz
IBM Corporation/IPLAW/N50
1701 North Street
Endicott, NY 13760