Ex parte Gephardt et al.

Board of Patent Appeals and Interferences

Apr 25, 2000

08125406 (B.P.A.I. Apr. 25, 2000)

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publication in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DOUGLAS D. GEPHARDT and KELLY M. HORTON
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Appeal No. 1997-0416
Application No. 08/125,406
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ON BRIEF
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Before JERRY SMITH, LALL, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-20,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 1997-0416
Application No. 08/125,406
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BACKGROUND
The appellants' invention relates to a system and method for restarting a peripheral
bus clock signal and requesting mastership of a peripheral bus. The stopping and
restarting of the clock are disclosed as a power saving feature. An understanding of the
invention can be derived from a reading of exemplary claim 14, which is reproduced
below.
14. A method for re-starting a peripheral bus clock signal and requesting
mastership of a peripheral bus comprising the steps of:
stopping said peripheral bus clock signal upon the occurrence of a
predetermined condition;
generating an asynchronous clock request signal within an alternate bus
master;
re-starting said peripheral bus clock signal in response to said
asynchronous clock request signal; and
generating a synchronous bus request signal within said alternate bus
master to request mastership of said peripheral bus after said
peripheral bus clock signal has been re-started, wherein said
synchronous bus request signal is synchronous to said peripheral bus
clock signal.
Appeal No. 1997-0416
Application No. 08/125,406
We note that the examiner has rejected claims 12 and 13 in the body of the rejection, but did not1
include these 2 claims in the heading.
3
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Herrig et al. (Herrig) 4,835,737 May 30, 1989
Murphy 5,128,970 Jul. 07, 1992
Smith et al. (Smith) 5,167,024 Nov. 24, 1992
Admitted prior art in Figure 1
Claims 1-4, 7-8 and 14-18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Admitted prior art in Figure 1 in view of Herrig and Murphy. Claims 5, 6,
9-13 and 19-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over1
Admitted prior art in Figure 1, Herrig and Murphy in view of Smith.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 11, mailed Sep. 4, 1996) for the examiner's reasoning in support of
the rejections, and to the amended appellants’ brief (Paper No. 14, filed Dec. 5, 1997) for
the appellants’ arguments thereagainst.
Appeal No. 1997-0416
Application No. 08/125,406
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OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
Appellants argue that there should be four separate groupings of claims paralleling
the chain of claim dependency. Appellants have not provided separate argument beyond
arguing claims 1 and 9. Therefore, we will address only two groupings which correspond
to the groupings in the examiner’s rejections. We will address claims 14 and 9 which are
the broadest claims in each respective group.
CLAIMS 1-4, 7-8 AND 14-18
Appellants argue that none of the prior art applied against the claims addresses the
problem of power saving with peripheral clocks when using alternative bus masters as
disclosed on pages 2-3 of the specification. (See brief at pages 5-7.) We agree with
appellants. Appellants argue the limitations of claim 1 and that the prior art does not meet
these recited functions. (See brief at pages 9-10.) We agree with appellants. Claim 14 is
broader than the argued limitations of claim 1 and we will address the language of claim
14 as it relates to these arguments.
Appeal No. 1997-0416
Application No. 08/125,406
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While claim 14 is directed broadly to a method of stopping and starting a peripheral
bus clock, the language of claim 14 requires that the alternate bus master must generate
“an asynchronous clock request signal within an alternate bus master” and the peripheral
bus clock must be restarted “in response to said asynchronous clock request signal” and
then “generating a synchronous bus request signal within said alternate bus master to
request mastership of said peripheral bus after said peripheral bus clock signal has been
re-started, wherein said synchronous bus request signal is synchronous to said peripheral
bus clock signal.” The examiner combines various teachings in the rejection and
concludes that the combined teachings would meet the claimed invention, but the examiner
has not provided a convincing line of reasoning to achieve the claimed invention. While
each of the incremental steps of the process may have been generally known, the
examiner has not addressed the problem set forth in the specification with respect to
presence of alternative bus masters in a system and the need for a synchronous bus
request therefrom. In the discussion of the admitted prior art, the specification specifies
that if the peripheral bus clock is not operational then the bus request cannot be performed
in the prior art Figure 1. With the proposed combination of Herrig with respect to halting
the bus clock and restarting of the bus clock after physical manipulation of a board, there
would not be a signal requesting restart of the clock as required by claim 14. Moreover,
we find no motivation in Herrig for having an alternative bus master request a clock restart.
Appeal No. 1997-0416
Application No. 08/125,406
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Furthermore, we find that the examiner has not provided a line of reasoning thereto, and
the examiner has not cited any portion of Herrig besides Figure 1, items 112 and 120-127.
The examiner maintains that the restart of the clock is “in response to [an] assertion of a
signal indicating bus clock is again needed.” (See answer at page 4.) The examiner has
not addressed that the bus master is requesting the restart of the clock rather than an
actuation of a switch.
With respect to the examiner's response to the appellants' arguments, the examiner
generally maintains that appellants are arguing the references individually and does not
address the merits of these arguments. (See answer at page 9-11.) The examiner strings
numerous case citations together, but does not apply these recited citations to the
combination of teachings. Therefore, the examiner's responses are not persuasive.
Appellants argue that the examiner has used impermissible hindsight to reconstruct
the claimed invention. (See brief at pages 8-9.) We agree with appellants. The examiner
has attempted to find the parts of the claimed invention and reconstruct the claimed
invention, and we find the examiner has not provided a convincing line of reasoning to
modify the prior art teaching to meet the claimed invention. Therefore, we cannot sustain
the rejection of claim 14. Similarly, we cannot sustain the rejection of independent claims
1 and 18 which contain similar limitations.
Appeal No. 1997-0416
Application No. 08/125,406
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CLAIMS 5, 6, 9-13, 19 AND 20.
With respect to claim 9, Appellants argue that Smith does not remedy the
deficiency in the above combination. (See brief at pages 10-11.) We agree with
appellants. Again, the examiner is brief in his discussion of and citations to the applied
prior art teachings of Smith. (See answer at page 6.) From our review of Smith, Smith is
concerned with power management which is controlled by the CPU 12 and power
manager (PMGR) 11. We find no disclosure in Smith which teaches or suggests that the
peripherals request that the peripheral bus clock be restarted. Smith generally discloses
three modes of operation of the computer 10 and monitoring by the PMGR. (See Smith at
columns 7 and 8.) Smith discloses that the PMGR monitors lines 37 such that any input
from the I/O controller will wake the computer from the sleep state. (See Smith at column
8, lines 21-23.) Clearly, Smith does not disclose the I/O transmitting a request to wake the
computer, but rather that the computer monitors to determine when to stop and restart
power or clocks within the system using switches 26 and clock control 27 to wake and
resume operation. Therefore, Smith does not remedy the deficiency in the combination of
the admitted prior art, Herrig and Murphy. Hence, we cannot sustain the rejection of claim
9 and dependent claims 5, 6, 10-13, 19 and 20.
Appeal No. 1997-0416
Application No. 08/125,406
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-20 under 35 U.S.C. §
103 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
lp
Appeal No. 1997-0416
Application No. 08/125,406
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B. NOEL KIVLIN
CONLEY, ROSE & TAYON, P.C.
P. O. BOX 3267
HOUSTON , TX 77253-3267
APPEAL NO. 1997-0416 - JUDGE DIXON
APPLICATION NO. 08/125,406
APJ DIXON
APJ JERRY SMITH
APJ LALL
DECISION: REVERSED
Prepared By: Leticia Pihulic
DRAFT TYPED: 24 Jan 01
FINAL TYPED: