Ex parte Berg et al.

Board of Patent Appeals and Interferences

Jan 11, 2002

08509619 (B.P.A.I. Jan. 11, 2002)

Application for patent filed July 31, 1995.1
1
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was not written for publication and is not binding precedent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 WILLIAM F. BERG and EDWARD J. ROWLANCE
_____________
Appeal No. 99-1563
Application 08/509,6191
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING and RUGGIERO, Administrative
Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
Appeal No. 1999-1563
Application 08/509,619
Specification, page 3, lines 8-9.2
Figure 8, devices 878, 880, 882, and 884; specification3
page 21, line 1 through page 22, line 20.
Figure 8, item 800.4
Specification, page 3, lines 10-14.5
Specification, page 7, lines 15-22.6
2
claims 2-31, all the claims pending in the present
application. Claim 1 has been canceled.
The invention relates generally to an object oriented I/O
device interface framework . The mechanism is used to attach2
a variety of I/O devices to a computer system . The I/O3 4
framework mechanism comprises core functions and extensible
functions . The core functions are designed not to be subject5
to modification by a consumer of said framework mechanism, and
the extensible functions are designed so that they can be
customized and extended by the consumer.6
Independent claim 2 is reproduced as follows:
2. A computer system, said computer system comprising:
a bus;
a central processing unit;
main memory connected to said central processing unit via
Appeal No. 1999-1563
Application 08/509,619
3
said bus;
at least one I/O device;
at least one application program, said application
program residing in said main memory for execution on said
central processing unit, said application program using
facilities provided by said I/O device; and
an I/O framework mechanism, said I/O framework mechanism
residing in said main memory for execution on said central
processing unit, said I/O framework mechanism being used to
manage and control said I/O device, said I/O framework
mechanism further comprising core function and extensible
function, said core function being designed such that said
core function is not to be subject to modification by a
consumer of said framework mechanism, said extensible function
being designed such that said extensible function can be
customized and extended by said consumer.

The Examiner relies on the following reference:
Maeurer et al (Maeurer) 5,301,323 Apr. 5,
1994
Lemon et al (Lemon) 5,379,431 Jan.
3, 1995
Shing et al (Shing) 5,495,610 Feb.
27, 1996
Nguyen 5,544,302 Aug. 6,
1996
Claims 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, 18, 26, 27,
29, and 30 are rejected under 35 U.S.C. § 103 as unpatentable
over Lemon.
Appeal No. 1999-1563
Application 08/509,619
The Brief was received October 9, 1998.7
Mailed October 27, 1998.8
4
Claim 4, 10, 16 and 28 are rejected under 35 U.S.C. § 103
as being unpatentable over Lemon when taken with Nguyen.
Claims 7, 13, 19 and 31 are rejected under 35 U.S.C. §
103 as being unpatentable over Lemon when taken with Maeurer.
Claims 20, 21, 23 and 24 are rejected under 35 U.S.C. §
103 as being unpatentable over Lemon when taken with Shing.
Claim 22 is rejected under 35 U.S.C. § 103 as being
unpatentable over Lemon when taken with Shing and Nguyen.
Claim 25 is rejected under 35 U.S.C. § 103 as being
unpatentable over Lemon when taken with Shing and Maeurer.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Brief and Examiner's7
Answer , for the respective details thereof. 8
OPINION
Appeal No. 1999-1563
Application 08/509,619
Brief, page 5.9
Claims 2, 8, 14, 20 and 26.10
5
After careful review of the evidence before us, we will
not sustain the rejections.
Appellants assert that in regard to all the independent9
claims the examiner has failed to establish that certain10
given claim elements and limitations correspond to particular
aspects of Lemon. In particular, Appellants point to the
language in the last subparagraph of claim 2 which reads:
"said core function being designed such that
said core function is not to be subject to
modification by a consumer of said framework
mechanism, said extensible function being designed
such that said extensible function can be customized
and extended by said consumer".
In general, Appellants then argue that the passages of
Lemon cited by the Examiner show that Lemon teaches only
extensible functions and does not describe functions that are
designed not to be subject to change.
Specifically, Appellants then argue that column 15, line
59 through column 16, line 9 of Lemon simply describe how a
Appeal No. 1999-1563
Application 08/509,619
Brief, page 7.11
6
card can be added to Lemon and that other pieces are provided
by others, while there is no teaching regarding what aspects
of the Lemon mechanism are specifically designed not to be
changed. In regard to column 16, lines 50-54, of Lemon,
Appellants argue that this is a mere statement of goals,
indicating that part of a boot framework should be provided to
the customer and part of the boot framework should be capable
of being extended, but there is no teaching that either of
these parts are specifically designed not to be changed. In
regard to column 20, lines 15-29, of Lemon, Appellants argue
that this section of the reference points out that
modification of extensible function may occur at two different
times in the customization process, but that there is no
mention of what functions are not changed.
Appellants then point to the Examiner's reliance on11
certain explanatory remarks made by Appellants during
prosecution, taken in conjunction with column 4, lines 50-55
of Lemon. Appellants acknowledge their statement defining
Appeal No. 1999-1563
Application 08/509,619
Answer, page 8.12
Answer, page 9.13
7
core function as "aspects of the framework mechanism that are
present to provide/ensure consistent behavior of the framework
as a whole". As to the Lemon passage, Appellants assert that
it describes how public interfaces are well defined, and as
they make up extensible functions, they should be well defined
(Appellants' emphasis). The passage, it is asserted, does not
teach core function that is designed not to be changed. In
addition, Appellants point to Lemon's statement that
"frameworks may decompose into sub-frameworks . . ." to show
that their frameworks can be extended and can be broken apart.
In response to Appellants' arguments the Examiner first
points to column 16, lines 50-51, of Lemon which states "The12
booting framework must provide a set of base system
functions". The Examiner interprets "base" system functions to
correspond to "core" system functions not subject to
modification by the framework customer. Then the Examiner13
interprets Lemon's terminology of "existing ensembles" to
correspond to "core" software functions not subject to
Appeal No. 1999-1563
Application 08/509,619
Lines 11-14.14
8
modification by the framework customer. Finally, the Examiner
asserts that Lemon's statement
at column 4, lines 50-55, is a disclosure of core functions as
"aspects of the framework mechanism [that] are present to
provide/ensure consistent behavior of the framework as a
whole".
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998).
Turning first to Appellants' claim 2, we find that the
final subparagraph of this claim provides "said I/O framework14
mechanism further comprising core function and extensible
function, said core function being designed such that said
core function is not to be subject to modification by a
consumer of said framework mechanism" (emphasis added). We
have carefully reviewed each section of Lemon relied upon by
the Examiner as disclosing this limitation, and find no such
disclosure.
Appeal No. 1999-1563
Application 08/509,619
9
As regards Lemon's disclosure at column 4, lines 50-55,
that public interfaces and inter-relationships are well
defined and frameworks are the unit of design reuse, being
well defined and the unit of design reuse does not mandate
frameworks with core function specifically designed not to be
subject to modification by a consumer of the framework.
Column 15, line 59 through column 16, line 9, of Lemon
teach that a developer need not write much software, as most
software is supplied by existing ensembles. There is no basis
for the Examiner's interpretation of "existing ensembles" as
"core" software function not subject to modification by a
consumer of the framework mechanism. While this section of
Lemon's specification provides that third party developers
would have to write very little software since most of the
software to control the card is supplied by existing
ensembles, it does not teach that the existing ensembles are
designed not to be subject to modification by a consumer of
the framework mechanism.
Column 16, lines 50-54, of Lemon include the statement,
“The booting framework must provide a set of base system
functions”. The Examiner interprets “base system function”
Appeal No. 1999-1563
Application 08/509,619
10
as “core system
function not subject to modification by a consumer of said
framework”. This section of Lemon does not provide an
adequate basis for such an interpretation.
Column 20, lines 25-28, of Lemon include the statement
“in fact, some of the more primitive characteristics will only
be set at build time, while some of the more user-customizable
characteristics might be set in the workplace”. The
Examiner’s
reliance on this section of Lemon is not well placed as, inter
alia, it is directed to “characteristics” specific to booting
and not to “functions” as claimed.
The Examiner has therefore failed to set forth a prima
facie case. It is the burden of the Examiner to establish why
one having ordinary skill in the art would have been led to
the claimed invention by the express teachings or suggestions
found
in the prior art, or by implications contained in such
Appeal No. 1999-1563
Application 08/509,619
In regard to Appellants' pivotal claim limitation of a15
"core function being designed such that said core function is
not subject to modification by a consumer . . .", we note the
art recognized terminology of "black box" and "glass box".
The Microsoft Press Computer Dictionary, second edition,
(1994), at page 47 defines "black box" as "A unit whose
internal structure is unknown but whose function is
documented. . . . software designers use this term to refer to
. . . program code that performs a certain function. The
internal mechanics of the function don't matter to a designer
who uses a black box to obtain the function." (Emphasis
added).
In addition, we note the IBM developerWorks article by
Eric E. Allen, at page 3, defines "black box systems" as those
in which "the outside programmer has neither the ability to
view or modify the underlying code". This article also states
that for a "glass box" the outside programmer "can view the
source in order to craft extensions', and cannot modify the
underlying code (emphasis added).
Although these terms per se do not read upon the core
function claim limitations recited in the final paragraph of
each of Appellants' independent claims, they may be relevant
to the claimed invention. As "black box" and "glass box" were
not used in the Examiner's EAST and IEEE/IEE text searches of
record, the Examiner should consider whether to use these
terms for an additional search of the prior art.
11
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983).
Therefore, we will not sustain the rejection of claims 2,
3, 5, 6, 8, 9, 11, 12, 14, 15, 17, 18, 26, 27, 29, and 30
under 35 U.S.C. § 103 as unpatentable over Lemon .15
Our analysis of claims 8, 14, 20 and 26, all of the other
independent claims, reveals that each of these claims recites
Appeal No. 1999-1563
Application 08/509,619
12
the same limitation of claim 2 analyzed above and found
lacking in Lemon. The Nguyen, Maeurer and Shing references
are relied upon by the Examiner in the five additional
rejections before us solely for their disclosure of specific
limitations presented in the dependent claims, and not for a
core function being designed such that the core function is
not to be subject to modification by a consumer of the
framework mechanism.
Therefore, we will not sustain the following rejections:
1. The rejection of claims 4, 10, 16 and 28 under 35
U.S.C. § 103 as unpatentable over Lemon when taken with
Nguyen;
2. The rejection of claims 7, 13, 19 and 31 under 35
U.S.C. § 103 as unpatentable over Lemon when taken with
Maeurer;
3. The rejection of claims 20, 21, 23 and 24 under
35 U.S.C. § 103 as unpatentable over Lemon when taken with
Shing;
4. The rejection of claim 22 under 35 U.S.C. § 103 as
unpatentable over Lemon when taken with Shing and Nguyen;
Appeal No. 1999-1563
Application 08/509,619
13
5. The rejection of claim 25 under 35 U.S.C. § 103 as
unpatentable over Lemon when taken with Shing and Maeurer.
We have not sustained the rejection of claims 2-31 under
35 U.S.C. § 103. Accordingly, the Examiner's decision is
reversed.
REVERSED
Appeal No. 1999-1563
Application 08/509,619
14
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
MRF:pgg
Steven W. Roth
IBM Corporation
Dept. 917
3605 Highway 52 North
Rochester, MN 55901-7829