Ex parte Bowen

Board of Patent Appeals and Interferences

Jul 11, 1997

08002168 (B.P.A.I. Jul. 11, 1997)

Application for patent filed January 8, 1993.1
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STEVEN J. BOWEN

_____________
Appeal No. 96-1349
Application 08/002,1681
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and FLEMING, 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 rejection of claims 1-3 and 5-9, which
constitute all the claims remaining in the application.
Appeal No. 96-1349
Application 08/002,168
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The invention pertains to a method of normalizing a data
structure for use when a first process executing in a first
computer makes a remote procedure call on a second process
executing in a second computer.
Representative claim 1 is reproduced as follows:
1. A method, executed by a first process in a first
computer system, of normalizing a data structure having a first
member definition structure which includes at least one member
and at least one padding bit, said data structure being
transmitted to the first process from a second process executing
in a second computer system using a remote procedure call,
comprising the steps of:
(a) receiving, on said first computer system, the data
structure;
(b) performing, by said first process in said first computer
system, a logical bitwise AND operation of the data structure
with a template structure and producing a normalized data
structure, said template structure having a second member
definition structure equivalent to the first member definition
structure and having member bits set to 1 and padding bits set to
0; and
(c) replacing the data structure with the normalized data
structure.
The examiner relies on the following reference:
Davidson et al. (Davidson) 5,307,490 Apr. 26, 1994
(filed Aug. 28, 1992)
Claims 1-3 and 5-9 stand rejected under 35 U.S.C. § 112,
first paragraph, as being based on an inadequate disclosure.
Appeal No. 96-1349
Application 08/002,168
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Claims 1-3 and 5-9 also stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Davidson taken alone.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments in
support of the rejections and the evidence of obviousness relied
upon by the examiner as support for the obviousness rejection.
We have, likewise, reviewed and taken into consideration, in
reaching our decision, the appellant's arguments set forth in the
brief 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 disclosure in this application describes the claimed
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
Appeal No. 96-1349
Application 08/002,168
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the invention as set forth in claims 1-3 and 5-9. Accordingly,
we reverse.
We consider first the rejection of claims 1-3 and 5-9
under the first paragraph of 35 U.S.C. § 112. The examiner has
objected to the specification “as failing to adequately teach how
to make and/or use the invention i.e [sic] failing to provide an
enabling disclosure to support claims 1-3 and 5-9" [answer, page
3]. The examiner explains that appellant has not disclosed how
the computer program code can perform the logical bitwise AND
operation to produce a normalized data structure. Finally, the
examiner concludes that it would require undue experimentation
for one of ordinary skill in the art to make and use the
invention.
Appellant makes two major arguments in response to this
rejection. First, appellant argues that the examiner has failed
to satisfy his initial burden of demonstrating why the
specification is not enabling. Second, appellant argues that the
claimed invention is clearly described in the specification in a
manner which would enable others to make and use the claimed
invention as required by Section 112.
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To comply with the enablement clause of the first
paragraph of 35 U.S.C. § 112, the disclosure must provide an
adequate description such that the artisan could practice the
claimed
invention without undue experimentation. In re Scarbrough, 500
F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974); In re Brandstadter,
484 F.2d 1395, 1407, 179 USPQ 286, 295 (CCPA 1973). The burden
is initially upon the examiner to establish a reasonable basis
for questioning the sufficiency of the disclosure. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982).
The Patent and Trademark Office (PTO) has the burden of giving
reasons, supported by the record as a whole, why the
specification is not enabling. Showing that the disclosure
entails undue experimentation is part of the PTO's initial
burden. In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219
(CCPA 1976). Enablement is not precluded by the necessity for
some experimentation. However, experimentation needed to
practice the invention must not be undue experimentation. The
key word is "undue",
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Application 08/002,168
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not "experimentation." In re Wands, 858 F.2d 731, 736-37, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988). When the rules of law just
noted are applied to the facts of this application, it is clear
that the examiner has failed to satisfy the burden of providing a
reasonable basis for questioning the sufficiency of the
disclosure, and that the position of the examiner is
substantively incorrect in any case.
The invention which must be disclosed within the meaning
of 35 U.S.C. § 112 is the invention as set forth in the claims.
When claim 1 (quoted above) is considered, it can be seen that
the following three steps are performed: 1) receiving a data
structure, 2) ANDing the received data structure bitwise with a
specific template structure, and 3) replacing the received data
structure with the result of the ANDing step. We are at a loss
to understand why the examiner finds this invention not to be
enabled by the present specification. These three steps could
hardly be more routine for the person skilled in the data
processing arts. The application figures and corresponding
description describe precisely how the process is performed. The
examiner’s rejection is based on nothing more than a bare
Appeal No. 96-1349
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opinion, and it cannot be substantiated by any factual assertions
proposed by the examiner. Therefore, the examiner has failed to
provide a reasonable basis for questioning the sufficiency of the
disclosure.
Notwithstanding the fact that the examiner has presented
no reasonable basis for questioning the sufficiency of the
disclosure, we are unable to understand why the examiner has
ignored the fact that appellant submitted a computer program
which would carry out the claimed invention as an appendix to the
specification. Thus, even if the examiner had reasonably
questioned the enablement of the disclosure, he has presented no
reasons why the implementing computer program originally
disclosed by appellant would not be sufficient to satisfy the
enablement provision of 35 U.S.C. § 112.
It has not been particularly helpful to us that in
response to specific contentions raised by appellant the examiner
has simply repeated verbatim the same statements made in
rejecting the claims in the first place. The response to
arguments section of the examiner’s answer should be just that --
a response to specific arguments made by appellant and not simply
a repetition of the rejection.
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Application 08/002,168
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In summary, the examiner’s rejection of claims 1-3 and 5-
9 under 35 U.S.C. § 112 is not sustained.
We now consider the rejection of claims 1-3 and 5-9 under
35 U.S.C. § 103 as unpatentable over the teachings of Davidson.
The examiner points out that Davidson normalizes a data structure
which is the purpose of appellant’s invention. The examiner
admits that “Davidson did not explicitly give details about
producing the normalized data structure by performing a logical
bitwise AND operation of the data structure with a template data
structure” [answer, page 5]. The examiner concludes, however,
that it would have been obvious to normalize a data structure in
this manner because it “would have performed a very efficient
comparison of the data structure than the marshalling mechanism”
which has the effect of “thereby increasing the overall
performance and reliability of the data structure comparison
mechanism” [answer, page 5].
Appellant responds that the examiner has failed to set
forth a prima facie case of obviousness. Appellant argues that
the examiner has modified the teachings of Davidson without any
suggestion from within the prior art. Appellant also argues that
Davidson discloses no template structure as claimed and suggests
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Application 08/002,168
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nothing about performing a logical bitwise AND operation on bits
of a data structure and a template structure. The examiner’s
response to appellant’s arguments is to simply repeat the
statements of the rejection.
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 cogent 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
Appeal No. 96-1349
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U.S. 1017 (1986); ACS Hospital Systems, Inc. v. Montefiore
Hospital, 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).
As indicated by the cases just cited, the examiner has at
least two responsibilities in setting forth a rejection under 35
U.S.C. § 103. First, the examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the examiner must explain why the
identified differences would have resulted from an obvious
modification of the prior art. In our view, although the
examiner has made an
effort to identify the differences between the claimed invention
and the prior art, he has failed to properly support his
conclusion that such differences would have been obvious to one
having ordinary skill in the art.
The examiner’s position can be stated basically to be
that the modification of Davidson necessary to arrive at the
claimed invention would have been obvious to the artisan because
it would improve efficiency, performance and reliability of the
Appeal No. 96-1349
Application 08/002,168
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data structure comparison mechanism. While this result indicated
by the examiner is undoubtedly correct, it is not a valid basis
for rejection of a claim. It explains more why appellant wishes
to patent such a process. Since most inventions are designed to
improve efficiency, performance or reliability, the examiner’s
analysis would make it very difficult to patent anything.
Our analysis of independent claims 1-3 and our review of
the evidence supplied by the examiner in support of the rejection
indicate that the examiner has failed to set forth a prima facie
case of obviousness. Each of the independent claims recites
specific details of a template data structure and a specific
procedure for creating the normalized data structure. Although
the creation of a normalized data structure may be present in
Davidson, there is no description in Davidson of using a template
data structure having the claimed details or of using a bitwise
AND operation in the generation of the normalized data structure
as claimed. We are unable to conclude that the specific steps
for normalizing a data structure as recited in the claims is
suggested by Davidson even if similar results are achieved.
The examiner has not considered the specific recitations
of the independent claims, but instead, has equated the overall
method to a concept and argued that the concept was well known
Appeal No. 96-1349
Application 08/002,168
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and would have been obvious to the artisan because it would
improve performance. The examiner has essentially dismissed all
noted differences between the claims and the prior art as being
irrelevant, nondistinguishing limitations. Merely asserting that
the claims and the prior art both normalize a data structure does
not address the specific differences between the claims and the
applied prior art. It is the specific sequence of steps recited
in the claims which must be analyzed and not whether the result
achieved by the claimed invention has been achieved by the prior
art as well. In other words, the rejection must focus on the
actual steps recited in the claims and not on whether the
function being implemented by the method was well known in the
art. The examiner’s approach does not establish a prima facie
case of obviousness.
The only suggestion for performing the steps of
appellant’s claims using the specific claimed template structure
comes from appellant’s own disclosure. Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor. Para-Ordnance Manufacturing v. SGS
Importers International Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996). Since
Appeal No. 96-1349
Application 08/002,168
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the examiner has not relied on any teachings of the applied prior
art which would have suggested the invention as specifically set
forth in the claims on appeal, we do not sustain the rejection of
claims 1-3 and 5-9 as unpatentable over Davidson.
In conclusion, we have not sustained the rejection of
claims 1-3 and 5-9 under either 35 U.S.C. § 112 or § 103.
Therefore, the decision of the examiner rejecting claims 1-3 and
5-9 is reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Patent Law Group
Digital Equipment Corporation
111 Powdermill Road, MS02-3/G3
Maynard, MA 01754-1499
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Application 08/002,168
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