Ex parte Dahlin et al.

Board of Patent Appeals and Interferences

Apr 18, 2000

08237988 (B.P.A.I. Apr. 18, 2000)

Application for patent filed May 4, 1994, entitled1
"Providing A Master Device With Slave Device Capability
Information."
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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journal and (2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MATS H. DAHLIN,
MATS E. ERIKSSON,
and LENNART A.N. LOFGREN

Appeal No. 1997-4129
Application 08/237,9881

ON BRIEF

Before KRASS, BARRETT, and GROSS, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
Appeal No. 1997-4129
Application 08/237,988
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DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 4, 7, and 8. Claims 10 and
11 are indicated to be allowable, and claims 2, 3, 5, 6, and
9 are objected to as being dependent upon a rejected base
claim.
We affirm.
BACKGROUND
The disclosed invention is directed to an apparatus and
method involving a master and slave device in which a
control program is downloaded from the master device to the
slave device. Capability information defining the functions
of the slave device is stored at a predefined portion of the
control program in the master device.
Claim 1 is reproduced below.
1. In a system having a master device coupled to a
slave device by means of an interface, wherein a
function of the master device includes downloading a
control program to the slave device, an apparatus for
providing the master device with capability information
corresponding to the slave device, the apparatus
comprising:
means for reading the capability information from
a predefined portion of the control program; and
Appeal No. 1997-4129
Application 08/237,988
Peterson was cited for the first time in the2
Examiner's Answer, but was not incorporated into the
rejection. The Examiner relies on Peterson for a teaching
that it was well known to associate a capability list with a
program (Examiner's Answer, pages 4-5). Since Appellants
address Peterson in their Reply Brief, we will treat Peterson
as part of the rejection. The Examiner should note that
references relied on in any way should be made part of the
rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3,
166 USPQ 406, 407 n.3 (CCPA 1970) ("Where a reference is
relied on to support a rejection, whether or not in a 'minor
capacity,' there would appear to be no excuse for not
positively including the reference in the statement of the
rejection.").
See footnote 2.3
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means for storing the capability information for
use by the master device during a communications
operation with the slave device.
The Examiner relies on the following prior art:
Hughes et al. (Hughes) 5,109,484 April 28, 1992
Peterson et al. (Peterson), Operating System Concepts
(2d ed. Addison-Wesley Publ. Co. 1985), pp. 412-13.2
Claims 1, 4, 7, and 8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Hughes and Peterson.3
We refer to the Examiner's Answer (Paper No. 18) (pages
referred to as "EA__") for a statement of the Examiner's
position and to the Reply Brief (Paper No. 19) (pages
Appeal No. 1997-4129
Application 08/237,988
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referred to as "RBr__") for a statement of Appellants'
arguments thereagainst.
OPINION
Grouping of claims
Appellants state that "claims 1, 4, 7 and 8 stand or
fall together" (Br4). This means that we should decide the
appeal by selecting a single claim from the group. See
37 CFR § 1.192(c)(7) (1996). However, Appellants argue the
various limitations of claims 1, 4, 7, and 8 in the Brief.
Although Appellants have not complied with the regulations
regarding the grouping of claims, we address all of the
claims because of the similarity in claim language.
Obviousness
We agree with Appellants' argument (RBr1-2) that the
Examiner changes the rejection in the Examiner's Answer to
rely for the first time on the subsequent initial program
load (IPL) using configuration data sent back from the
terminal, rather than relying on general statements about
the IPL in Hughes as was done in the Final Rejection. For
this reason, the arguments in the Brief are no longer
Appeal No. 1997-4129
Application 08/237,988
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relevant. The Examiner does not reply to Appellants' Reply
Brief and, thus, leaves it to us to sort out the arguments
in the first instance. Rather than further delay a decision
on the appeal by remanding to the Examiner to address the
arguments, we decide the case.
Hughes discloses a system comprising controller 10 and
terminals 12, which are controlled by programs stored in
their respective RAMs (col. 2, lines 59-60). "In order to
operate a terminal, the terminal must know the I/O devices
that are connected to it and obtain programs from the
controller to control these devices." (Col. 3,
lines 47-50.) The programs to control the devices are
"loadable drivers" (col. 3, lines 15-17). Hughes discloses
that during the IPL, the configuration of the list of I/O
devices attached to the terminal is determined and verified
by an operator. Once the configuration is verified, "the
configuration is stored in the hard totals module
[non-volatile memory] of the terminal and is transmitted to
the controller where it is stored on the disk" (col. 5,
lines 24-26). After a reset and during a subsequent program
Appeal No. 1997-4129
Application 08/237,988
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load "the controller sends only the load modules required by
the terminal when requested" (col. 5, lines 33-37).
We find that Hughes discloses that the controller,
which corresponds to the claimed "master device," stores
configuration information about each terminal, which
corresponds to the claimed "capability information." Hughes
also discloses that the controller stores load modules of
loadable drivers to be downloaded to the terminals. The
configuration information and the load modules together
correspond to the claimed "control program." Hughes does
not describe how the configuration information and the
control program are related. However, there must be
configuration information for each terminal and load modules
for each type of device capable of being attached to a
terminal.
Claim 1 recites "means for reading the capability
information from a predefined portion of the control
program." Claim 4 contains a similar limitation. Claim 7
recites "inseparably associating the capability information
with the control program," where dependent claim 8 recites
that this step "comprises storing the capability information
Appeal No. 1997-4129
Application 08/237,988
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at a predefined portion of the control program." We examine
the disclosure to determine what is meant by these
limitations.
The specification discloses, in connection with
Figure 1, that the master device 101 includes control
software 107, 107', 107" for each of the slave devices 103,
103', 103" which is to be downloaded to the slave devices
(specification, page 7, line 29 to page 8, line 7). The
specification further discloses (page 8, line 26 to page 9,
line 9):
In accordance with the present invention, the
control software 107 is inseparably associated with a
portion that contains capability information 109
regarding the functions supported by the corresponding
slave device 103. For example, the start of the
capability information 109 may be located at a known
position within the control software 107 so that the
master device 101 is able to locate it, and distinguish
it from the rest of the control software 107. In a
preferred embodiment of the invention, the capability
information 109 is readily identifiable because the
control software 107 for the slave device 103 is
divided into files which are retained in a data base at
the master device 101. In this embodiment, it is
important that this set of files be treated as a single
package within the master device 101. One or more of
these files contains only data representing the
capability information 109.
Figure 1 shows that control software 107 for a slave
device 103 has its own capability information 109, and there
Appeal No. 1997-4129
Application 08/237,988
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is separate control software 107 and capability information
109 for each slave 103.
In our opinion, the limitation of "a predefined portion
of the control program" in claims 1, 4, and 8 is broad
enough to read on the configuration information in Hughes,
where the configuration information for the terminals and
the load modules together correspond to the claimed "control
program." The "predefined portion" limitation does not
positively require the structure of a single program of
consecutive lines of control software instructions
concatenated with (or "appended to") capability information,
because the specification indicates that "inseparably
associating" includes storing the capability information and
the control software as separate files in a database of the
master device (specification, pages 8-9). Thus, the
Examiner's reasoning that it would have been obvious to
append the configuration information to the load modules is
unnecessary in view of the breadth of the claims. One of
ordinary skill in the art would appreciate that the system
in Hughes distinguishes between configuration information
and the load modules and reads the configuration information
Appeal No. 1997-4129
Application 08/237,988
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(the "predefined portion of the control program") for use in
sending the relevant load modules to the terminals.
Since claim 8 is considered unpatentable over Hughes,
independent claim 7 from which it depends is also considered
unpatentable thereover. Further, the step of "inseparably
associating the capability information with the control
program" in claim 7 is broad enough to read on the fact that
the configuration information ("capability information") in
Hughes is related to or associated only with the load
modules and not some other programs. As already discussed,
"inseparably associating" includes storing the capability
information and the control software as separate files in a
database of the master device (specification, pages 8-9).
For the reasons stated, we conclude there is sufficient
evidence to establish a prima facie case of obviousness of
claims 1, 4, 7, and 8. We next look to Appellants'
arguments.
Appellants argue that before one can say it would have
been obvious to append configuration data to a control
program, it is first necessary to identify the control
program. Appellants argue that they disclose a separate
Appeal No. 1997-4129
Application 08/237,988
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control program for each slave device, whereas in Hughes
there is no one control program for a given terminal, but
rather the device drivers are stored individually (RBr4).
Therefore, it is argued that associating a configuration
file with a driver would require that "each configuration
file would have to be appended to each of the device
drivers" (RBr4), which is a waste of storage space.
The claims do not require a separate control program
for each slave as illustrated by Figure 1. Moreover, the
claims only require a master and a single slave. As
discussed, we conclude that the claim language is broad
enough to encompass Hughes and that it is unnecessary to
rely on the Examiner's "append" reasoning. We find the
configuration information for the terminals in Hughes to
correspond to the claimed "capability information" and the
configuration information and the load modules together to
correspond to the claimed "control program." When the
system in Hughes reads the configuration information, it is
reading "from a predetermined portion of the control
program" since the claims do not recite the structure of the
"predetermined portion."
Appeal No. 1997-4129
Application 08/237,988
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Appellants argue that Peterson does not disclose or
suggest appending or otherwise associating capability
information with a control program to be downloaded to a
slave device and that Peterson's capability information is
not the same thing as the claimed capability information
(RBr5-6).
It is true that Peterson does not disclose downloading
programs to a slave device and that Peterson's "capability
lists" (defined as a "list of objects and the operations
allowed on those objects") are the objects and operations to
which the program has access, not functions performed by a
slave device. Nevertheless, Peterson discloses that the
capability list is inseparably associated with the program
and that principle is capable of broad application. In our
opinion, one of ordinary skill in the computer art would
have been motivated to inseparably associate the
configuration information in Hughes with the load modules
because the configuration information refers only to the
load modules. Thus, Peterson is considered to additionally
support the obviousness rejection.
Appeal No. 1997-4129
Application 08/237,988
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For the reasons stated above, we conclude that a
prima facie case of obviousness exists with respect to
claims 1, 4, 7, and 8. Accordingly, the rejection of
claims 1, 4, 7, and 8 is sustained.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1997-4129
Application 08/237,988
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Ronald L. Grudziecki
BURNS, DOANE, SWECKER & MATHIS
P.O. Box 1404
Alexandria, VA 22313-1404