Ex Parte Christensen et al

Board of Patent Appeals and Interferences

Jan 23, 2003

08577897 (B.P.A.I. Jan. 23, 2003)

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publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DIRK R. CHRISTENSEN
and MATTHEW CASTRIGNO
____________
Appeal No. 2000-0258
Application No. 08/577,897
____________
ON BRIEF
____________
Before BARRETT, GROSS, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-14, which are all of the
claims pending in this application.
Appeal No. 2000-0258 Page 2
Application No. 08/577,897
invention can be derived from a reading of exemplary claim 1,
which is reproduced as follows:
1. In a data processing system that includes a number of
system components and one or more redundant system components, a
method for protecting the system components from transients that
arise on a system interconnect during switching events,
comprising:
the system components operating in a normal mode of
operation;
detecting that a switching event, wherein a first redundant
system component replaces a failed system component, is to occur;
indicating to the system components that the switching event
is to occur; the system components entering a standby mode of
operation wherein each of the system components isolate their
circuitry from the system interconnect during the switching event
by tri-stating respective interfaces to the system interconnect;
and
the system components returning to the normal mode of
operation in response to a triggering event.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Herrig et al. 4,835,737 May 30, 1989
(Herrig)
Madonna et al. 5,596,569 Jan. 21, 1997
(Madonna) (effectively filed Mar. 8, 1994)
Appeal No. 2000-0258 Page 3
Application No. 08/577,897
Claims 2-6 and 8-11 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Herrig in view of Ady and Madonna.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellants regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 16, mailed
March 12, 1999) for the examiner's complete reasoning in support
of the rejections, and to appellants' brief (Paper No. 15, filed
February 1, 1999) and reply brief (Paper No. 17, filed May 3,
1999) for appellants' arguments thereagainst. 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).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
Appeal No. 2000-0258 Page 4
Application No. 08/577,897
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 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 1-14.
Accordingly, we reverse, essentially for the reasons set forth by
appellants.
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
Appeal No. 2000-0258 Page 5
Application No. 08/577,897
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); 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. 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).
Appellants assert (brief, page 5) that "[e]ach of the
present claims recite that, prior to a switching event, each of a
number of system components of a data processing system isolate
their circuitry from a system interconnect (e.g., by tri-stating
an interface to the interconnect)." The examiner acknowledges
Appeal No. 2000-0258 Page 6
Application No. 08/577,897
a teaching of "non-disruptively interconnecting peripheral device
from the host device by disabling the communication bus from the
system interconnects by tri-state buffers.” (See answer, page 3)
We find that Herrig discloses inhibiting the operation of
the bus in the period of time that a module is being inserted or
removed from a connector connected to the bus, and reactivates
the bus after the module has been inserted or removed. In the
removal of a module from its associated connector, a switch on
the module is operated to provide an inhibit signal to a control
circuit which inhibits operation of the bus (col. 1, lines 46-
53). The control circuit, in response to the inhibit signal,
seizes control of the bus and halts the clock signals which
control the operation of the bus, thus preventing any other
circuits from seizing or transmitting data on the bus (col. 2,
lines 5-9). This isolates the connected circuits from any
transients which may occur on the bus during insertion or removal
of a bus connected circuit board (col. 5, lines 1-4). Other
circuits can continue to perform functions which do not require
Appeal No. 2000-0258 Page 7
Application No. 08/577,897
find that in Herrig, the modules are isolated from the bus as a
result of seizure of the bus by the control circuit and halting
of the clock signals which control the operation of the bus.
Ady discloses (col. 5, lines 30-36) that "[a]lternatively,
the computer bus 29 need not be disabled and enabled by the
computer. Rather logic circuits, such as tri-state bi-
directional buffers located directly on the card header 10 may
enable and disable signals between the module 20 and the bus 29
in response to the switch 36, when the module is inserted and de-
inserted." From the disclosure of Ady, we find that a module may
be isolated from the computer bus 29 using tri-state bi-
directional buffers, as an alternative to the computer bus 29
being disabled by the computer. Although Ady teaches that
signals between the module 20 and the bus 29 are enabled and
disabled in response to switch 36, we find no teaching or
suggestion of having each of the modules isolate their circuitry
from the computer bus, but rather find that only the tri-state
bi-directional buffers located directly on the card header 10 of
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Application No. 08/577,897
suggestion to modify each of the remaining system components to
also isolate its circuitry from the system interconnect as
required by each of the independent claims. To find that each of
the modules isolates its circuitry we would have to resort to
speculation, which we decline to do. The examiner may not resort
to speculation or unfounded assumptions to supply deficiencies in
establishing a factual basis. See In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967). From all of the above,
find that the examiner has failed to establish a prima facie case
of obviousness of the claimed invention recited in independent
claims 1, 7, and 12. Accordingly, the rejection of claims 1, 7,
and 12-14 under 35 U.S.C. § 103(a) is reversed.
We turn next to the rejection of claims 2-6 and 8-11 under
35 U.S.C. § 103(a) as unpatentable over Herrig in view of Ady and
Madonna. Upon review of the teachings of Madonna, we reverse the
rejection of claims 2-6 and 8-11 under 35 U.S.C. § 103(a) because
Madonna does not make up for the deficiencies of the basic
combination of Herrig and Ady.
Appeal No. 2000-0258 Page 9
Application No. 08/577,897
CONCLUSION
To summarize, the decision of the examiner to reject claims
1-14 under 35 U.S.C. § 103(a) is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2000-0258 Page 10
Application No. 08/577,897
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