Ex Parte Clark

Board of Patent Appeals and Interferences

Feb 26, 2003

08582661 (B.P.A.I. Feb. 26, 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today was not written for publication and is not
binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PETER D. CLARK
________________
Appeal No. 2001-1606
Application 08/582,661
________________
ON BRIEF
________________
Before THOMAS, JERRY SMITH and DIXON, 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, 3-21 and 23-25, which
constitute all the claims remaining in the application.
Appeal No. 2001-1606
Application 08/582,661
Representative claim 1 is reproduced as follows:
1. A method for sharing a resource between a plurality of
threads of a multi-threaded program, the method comprising the
steps of:
(A) causing a first thread of said plurality of threads to
perform the steps of
(A1) acquiring a resource lock associated with said source;
(A2) holding said resource lock until detecting that another
thread of said plurality of threads requires use of said
resource;
(A3) in response to detecting that another thread of said
plurality of threads requires use of said resource, performing
the steps of
(a) finishing any use of said resource;
(b) releasing said resource lock; and
(c) requesting said resource lock.
The examiner relies on the following reference:
Richter, Jeffrey, Advanced Windows NT :The Developer’s Guide toTM
the Win32 Application Programming Interface, Microsoft Press,
1993, pages 173-288.
Claims 1, 3-21 and 23-25 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers Richter
taken alone.
Appeal No. 2001-1606
Application 08/582,661
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner 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, the appellant’s
arguments set forth in the briefs 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, 3-21 and 23-25. 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
Appeal No. 2001-1606
Application 08/582,661
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 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
Appeal No. 2001-1606
Application 08/582,661
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
The examiner’s rejection is set forth on pages 3-9 of the
examiner’s answer. With respect to independent claims 1 and 15,
appellant argues that Richter does not teach the step of causing
a first thread to hold a lock resource until another thread
requires use of the resource. According to appellant, in Richter
all threads release the lock after accessing the resource.
Appellant also argues that even though the examiner took
“Official Notice” that causing a thread to perform a desired
function was well-known in the art, this does not mean that
causing a thread to perform a particular function as claimed was
also well-known in the art. Appellant additionally argues that
Richter does not teach the step of causing a thread to request a
resource lock in response to detecting that another thread
requires the resource. Finally, appellant argues that the
examiner’s position that his official notice is now admitted
Appeal No. 2001-1606
Application 08/582,661
The examiner responds that appellant’s argument relates
to a matter that the examiner took “Official Notice” of, and that
appellant failed to seasonably challenge this finding. According
to the examiner, this “Official Notice” has now become admitted
prior art. The examiner also asserts that Richter teaches this
step [answer, pages 9-10].
Appellant responds that the examiner has still failed to
address the argument that Richter does not teach the step of
causing a thread to request the resource lock in response to
detecting that another thread requires the use of the resource.
Appellant also responds that the broad taking of “Official
Notice” by the examiner does not establish admitted prior art as
asserted by the examiner. Finally, appellant responds that the
general assertion of “Official Notice” by the examiner does not
constitute a proper finding of “Official Notice” in order to
establish a prima facie case of obviousness [reply brief].
We do not sustain the examiner’s rejection of independent
claims 1 and 15 for essentially the reasons argued by appellant
Appeal No. 2001-1606
Application 08/582,661
the resource and the step of causing the first thread to request
the resource lock when detecting that another thread requires use
of the resource. Although the examiner took “Official Notice”
that the first step was, per se, well known, this notice does not
establish that the first step in combination with the other steps
of claims 1 and 15 would have been obvious within the meaning of
35 U.S.C. § 103. We also agree with appellant that they are not
foreclosed from arguing the finding of “Official Notice” in this
case while the case is still being prosecuted before the
examiner.
We also agree with appellant that the second step noted
above is not taught by Richter, and the examiner has never
addressed this particular limitation of claims 1 and 15. We note
that the key to this limitation is that the first thread always
gets the resource lock back when another thread has finished with
the resource. This enables the first thread to provide feedback
to the user so that the user does not become concerned that the
program is not operating properly. There is no suggestion of
Appeal No. 2001-1606
Application 08/582,661
For all of these reasons, we do not sustain the
examiner’s rejection of independent claims 1 and 15, or of claims
3-10, 16-20 and 25 which depend therefrom.
With respect to independent claim 11, appellant argues
that Richter does not teach the last two causing steps recited
therein [brief, pages 12-13]. The examiner does not further
respond to this argument in the answer.
We agree with appellant that the portion of Richter
relied on by the examiner does not support the examiner’s finding
that Richter teaches these two causing steps of claim 11.
Therefore, we do not sustain the examiner’s rejection of
independent claim 11 or of claims 12-14 which depend therefrom.
With respect to independent claim 21, appellant argues
that Richter does not teach the step of causing the first thread
to suspend after inspecting the value at the memory location if
the value indicates that no other thread requires use of the
resource. Appellant asserts that the sleep function of Richter
noted by the examiner does not perform this step [brief, page
Appeal No. 2001-1606
Application 08/582,661
We agree with appellant that the portion of Richter
relied on by the examiner does not support the examiner’s finding
that Richter teaches the steps of claim 21. Therefore, we do not
sustain the examiner’s rejection of independent claim 21 or of
claims 23 and 24 which depend therefrom.
In summary, we have not sustained the examiner’s
rejection with respect to any of the claims on appeal.
Therefore, the decision of the examiner rejecting claims 1, 3-21
and 23-25 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 2001-1606
Application 08/582,661
Beyer, Weaver & Thomas, LLP
P.O. Box 778
Berkeley, CA 94704-0778