10464512 (B.P.A.I. May. 26, 2009)

Ex Parte Connor

Board of Patent Appeals and InterferencesMay 26, 2009

10464512 (B.P.A.I. May. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte PATRICK L. CONNOR ________________ Appeal 2008-004758 Application 10/464,512 Technology Center 2100 ________________ Decided:1 May 27, 2009 ________________ Before JAMES D. THOMAS, JEAN R. HOMERE, and CAROLYN D. THOMAS, Administrative Patent Judges. J. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-004758 Application 10/464,512 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3 through 6, 8 through 22, 24, and 25. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Invention Appellant’s command-response bus protocol reduces the number of response transactions generated on a bus. Data is packetized into respective transactions, each of which includes a writeback flag, which is enabled for the last packet but otherwise disabled. Only when the receiver of the packets observes the enabled writeback flag, does it generate a response transaction. (Spec. 11, Abstract; Figures 2 and 3). Representative Claim 1. A communication method for a computer bus, comprising transferring a quantity of data across the bus in a sequence of bus transactions, each bus transaction including a portion of the data provided in a packet and a writeback flag, wherein the writeback flag is enabled for a final transaction in the series and disabled for all other transactions in the sequence; and responsive to the enabled writeback flag, generating a transaction by a destination agent on the bus indicating whether all packets in the series of transactions were received properly. Appeal 2008-004758 Application 10/464,512 3 Prior Art and Examiner’s Rejections The Examiner relies on the following references as evidence of unpatentability: Habusha 6,205,498 B1 Mar. 20, 2001 Elzur 2004/0034725 A1 Feb. 19, 2004 (filed Aug. 14, 2003) Based upon an entered amendment after the Final Rejection (App. Br. 4; Answer 3) claims 1, 3 through 6, 8 through 22, 24, and 25, all claims on appeal, stand rejected under 35 U.S.C. § 103. As evidence of obviousness, the Examiner relies upon Elzur in view of Habusha. FINDINGS OF FACT 1. The Examiner’s statement of the rejection at pages 4 through 9 of the Answer relies upon the Elzur Patent Publication, which is again relied upon within the Examiner’s responsive arguments portion of the Answer. 2. On its face, both the publication date (Feb. 19, 2004) and the filing date (Aug. 14, 2003 of Elzur’s publication are after the filing date (June 19, 2003) of the present application. Elzur’s patent publication claims priority based on a provisional application filed on Aug. 14, 2002, which precedes the filing date of the present application. 3. The Examiner also states within the responsive arguments portion of the Answer at page 11 “that Applicants have not provided any evidence to support Applicants’ allegation that the 35 USC 103(a) Rejection over Elzur in view of Habusha et al. does not have full support from the Elzur Provisional.” The Examiner goes on to state at the top of page 12 of the Answer that “the disclosure, as noted above from Elzur Appeal 2008-004758 Application 10/464,512 4 Pub, is fully supported by Elzur Provisional. See Elzur Provisional, [06], [20], [21], [24], [25], and [28]-[30].” In subsequent pages of the Answer, the Examiner’s responsive arguments refer in part to both the Elzur Patent Publication as well as additional paragraphs of the Elzur Provisional Application. 4. In the paragraph bridging pages 2 and 3 of the Reply Brief, Appellant states: The Examiner's Answer states that "Applicants have not provided any evidence to support Applicants’ allegation that the 35 USC 103(a) Rejection over Elzur in view of Habusha et al. does not have full support from the Elzur Provisional." p. 11 (emphasis removed). First of all, it is the burden of the Office to provide support for all rejections of the claims. Second, the text of the Final Office Action does not provide citations (e.g., page and line number or paragraph number) to the provisional application. The Examiner's Answer states that the rejection has full support from the Elzur Provisional application (Id.), but most of the citations are, again, to the Elzur non-provisional. Finally, the Applicants have provided significant arguments of how the text of the non-provisional application is not supported by the Elzur provisional application as shown, for example, in the Response to the September 6,2005 Office Action that enclosed a copy of the provisional application, and Applicants' Appeal Brief at pages 6-8. It is noted that, for the first time, specific citations to the provisional application are provided in the Examiner's Answer. See p. 12. The Examiner states that support can be found at [06], [20], [21], [24], [25], and [28]-[30]. The Applicants have already presented arguments as to why these paragraphs are insufficient to support the rejection of the claims under 35 U.S.C. § 103(a) and incorporate them herein. Moreover, it is inappropriate at this stage of the prosecution to supplement the rejection of the claims. Appeal 2008-004758 Application 10/464,512 5 PRINCIPLES OF LAW Obviousness Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore, we look to Appellants’ Briefs to show error in the proffered prima facie case. ANALYSIS Based upon our assessment of the record before us and in view of the just-noted case law, we find that the Examiner has provided insufficient evidence of a prima facie case of obviousness. As noted initially in Finding of Fact 1, the actual statement of the rejection before us by the Examiner relies entirely upon the Elzur Patent Publication and its contents. The Examiner appears to have inappropriately placed the initial burden on the Appellant to provide evidence that the combination of Elzur and Habusha does not have full support from the Elzur Provisional Application. Proper prosecution presumes a prima facie case of obviousness has been established initially, however. Though Appellant has provided rebuttal arguments in the principal Brief, it is the Examiner who has the initial burden to establish a prima facie case of obviousness by providing evidence to support the rejection from the Elzur Provisional Application. This has not been done. As noted in Findings of Fact 3 and 4, Appeal 2008-004758 Application 10/464,512 6 it is not until the responsive arguments portion of the Answer that the Examiner begins to show some correlation to the Elzur Provisional Application to support the rejection. Finding of Fact 2 illustrates the facial impropriety of relying on the Elzur publication at all since its publication and filing dates are after the filing date of the present application. Therefore, it appears to us that the Examiner has placed an extra, awkward burden upon us to determine the details of the Examiner’s rejection in a backward manner, based upon the responsive arguments portion of the Answer. The Examiner does not even cite as evidence to be relied on the Elzur Provisional Application at page 3 of the Answer. There is no straight forward rejection set forth by the Examiner for our review based upon the Elzur Provisional Application. Thus, the Examiner’s basic position as to this reference appears to be weakly-based. We must therefore exercise conjecture as to what correlated teachings of the Elzur Provisional Application apply to the claimed subject matter beginning with each independent claim 1, 4, 10, 15, and 20 on appeal. Since we are a Board of review, it is inappropriate for us in effect to formulate the Examiner’s rejection based on the Elzur Provisional Application. On the basis on this record before us, we conclude that the Examiner has failed to establish a prima facie case of obviousness for all claims on appeal. Appeal 2008-004758 Application 10/464,512 7 CONCLUSION OF LAW AND DECISION We reverse the Examiner’s rejection under 35 U.S.C. § 103 of claims 1, 3 through 6, 8 through 22, 24, and 25, constituting all claims on appeal. REVERSED msc KENYON & KENYON LLP 1500 K STREET N.W. SUITE 700 WASHINGTON, DC 20005