Ex Parte Gray et al

Board of Patent Appeals and Interferences

Jul 25, 2005

09798287 (B.P.A.I. Jul. 25, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FORREST CLIFTON GRAY,
MICHAEL ANTHONY PEREZ
and MARK WALZ WENNING
____________
Appeal No. 2005-1361
Application No. 09/798,287
____________
ON BRIEF
____________
Before JERRY SMITH, SAADAT, and MACDONALD, 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 1-40, which constitute all the
claims in the application.
The disclosed invention pertains to a method and apparatus
for determining corrective measures in a data processing system.
Representative claim 1 is reproduced as follows:
1. A method for determining of corrective measures in a data
processing system, the method comprising the steps of:
(a) reading status values from a plurality of status
registers;
(b) combining the status values to form a new value; and
(C) using the new value to search a set of corrective
measures for at least one corrective measure.
The examiner relies on the following references:
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Dow et al. (Dow) 5,351,247 Sep. 27, 1994
Brichta et al. (Brichta) 5,790,780 Aug. 04, 1998
The following rejections are on appeal before us:
1. Claims 1-4, 6-11, 13, 16-20, 22-27, 29 and 32 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by the
disclosure of Dow.
2. Claims 5, 12, 14, 15, 21, 28, 30 and 31 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the teachings
of Dow taken alone.
3. Claims 33, 34 and 38-40 stand rejected under 35 U.S.C. §
102(b) as being anticipated by the disclosure of Brichta.
4. Claims 35-37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Brichta taken alone.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on appeal,
the rejections advanced by the examiner and the evidence of
anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the briefs along with the
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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 supports each of the examiner’s
rejections. Accordingly, we affirm.
We consider first the rejection of claims 1-4, 6-11, 13, 16-
20, 22-27, 29 and 32 under 35 U.S.C. § 102(b) as being
anticipated by the disclosure of Dow. Anticipation is
established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc.
v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner has indicated how he finds the claimed
invention to be fully met by the disclosure of Dow [answer, pages
6-12]. With respect to independent claim 1, appellants argue
that Dow fails to teach reading status values from a plurality of
status registers as claimed, but instead, teaches reading the
status values of one UUT at a time. Appellants also argue that
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Dow fails to teach combining the status values to form a new
value, where the status values are from a plurality of status
registers that are associated with a plurality of components as
claimed because the information in the recall data pattern in Dow
is not status values from a plurality of status registers.
Finally, appellants argue that Dow fails to teach using the new
value to search a set of corrective measures for at least one
corrective measure because there is no new value in Dow which is
a combination of status values from a plurality of status
registers [brief, pages 5-7].
The examiner responds that Dow discloses a plurality of
status registers which each contains a status value in the form
of the stored state values of the system. Essentially, the
examiner finds that each 32-bit machine state in Dow is stored in
a separate status register. The examiner also points out that
Dow teaches that these stored state values are processed into a
recall data pattern. The examiner finds that this recall data
pattern meets the combining step of claim 1. Finally, the
examiner points out that the recall data pattern in Dow is used
to return an ordered recommendation list which includes suggested
corrective actions which may repair a fault [answer, pages 18-
21].
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Appellants respond that the claim terminology must be
interpreted in light of the disclosure. Based on this,
appellants argue that the status registers of the claimed
invention should be interpreted as being associated with each of
the components that stores a status code corresponding to the
status of the component. Based on this interpretation,
appellants argue that Dow does not meet the claimed invention
because the machine states in Dow are outputs of a single UUT and
the status values of a plurality of components. Thus, appellants
argue that neither the machine states nor the recall patterns of
Dow are a status code corresponding to the status of the
component [reply brief, pages 2-6].
We will sustain the examiner’s rejection of independent
claim 1 and the rejection of claims 2, 7, 8, 11, 13, 16-18, 23,
24, 27, 29 and 32 which have not been separately argued by
appellants. We decline to interpret the claimed invention in the
manner proposed by appellants in the reply brief. Claims are to
be given their broadest reasonable interpretation during
prosecution. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404, 162
USPQ 541, 550 (CCPA 1969). It is improper to narrow the scope of
the claim by implicitly reading in disclosed limitations from the
specification which have no express basis in the claims. See Id.
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The claim interpretation proposed by appellants is based on a
disclosure of the preferred embodiment. Yet, appellants’
specification also states that the preferred embodiment is not to
be taken as limiting the claimed invention. We will follow the
general rule that the preferred embodiment will not be read into
the claim, and the terms in the claims will be given the broadest
reasonable interpretation.
When this interpretation is followed, we agree with the
examiner that the state patterns in Dow are stored in a plurality
of registers, these state values are processed into a recall data
pattern (new value), and that this new value is used to search a
set of corrective measures as explained by the examiner. Since
appellants’ arguments are essentially all based on an
interpretation of the claims which we find to be too narrow, we
find that appellants have failed to establish that the examiner’s
rejection is erroneous.
With respect to separately argued claims 3 and 19,
appellants broadly argue that Dow fails to teach where the new
value is a search key used to query the database. Appellants
also repeat the arguments considered above with respect to claim
1 [brief, page 7]. The examiner responds that the search tool 18
of Dow returns an ordered recommendation list of the stored data
patterns in the production database based on the recall data
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pattern [answer, pages 21-23]. Appellants respond that the
recall data pattern of Dow does not represent status values
indicating the state of a component stored in a status register
[reply brief, pages 6-7].
We will sustain the examiner’s rejection of claims 3 and 19
for the reasons argued by the examiner in the answer. Each of
appellants’ arguments with respect to these claims has been
considered above and decided adversely to appellants.
With respect to separately argued claims 4 and 20,
appellants argue that Dow fails to teach wherein the plurality of
status registers are associated with a plurality of components.
Appellants also repeat the arguments considered above with
respect to claim 1 [brief, page 8]. The examiner responds that
the claim recitation “associated with” is broad enough to be met
by the plural components of the system disclosed by Dow [answer,
page 23]. Appellants respond that the status registers of the
claimed invention should be interpreted in light of the
specification [reply brief, pages 7-8].
We will sustain the examiner’s rejection of claims 4 and 20
for the reasons argued by the examiner in the answer and for the
reasons discussed above with respect to claim 1.
With respect to separately argued claims 6 and 22,
appellants argue that Dow fails to teach where the plurality of
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components includes at least one software component. Appellants
assert that the software component in Dow is not within a
plurality of components associated with a plurality of status
registers where status values are read from [brief, pages 8-9].
The examiner responds that the claim recitation “associated with”
is broad enough to be met by the self-test program disclosed by
Dow [answer, page 23]. Appellants respond that the status of the
built-in self test is not a status code corresponding to a change
in the status value of he component that is stored in a status
register and read [reply brief, pages 8-9].
We will sustain the examiner’s rejection of claims 6 and 22
for the reasons argued by the examiner in the answer and for the
reasons discussed above with respect to claim 1.
With respect to separately argued claims 9, 10, 25 and 26,
appellants argue that Dow fails to teach bitwise operations on
the strings of binary digits to form the new value, which may
include concatenating the strings of binary digits. Appellants
assert that the portions of Dow relied on by the examiner fail to
disclose the claimed invention [brief, pages 9-10]. The examiner
responds by explaining how the operations performed in Dow can be
considered to be bitwise operations as claimed and how the
combined state values can be considered to be a concatenation of
binary strings [answer, pages 23-25]. Appellants respond that
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Dow does not teach status registers as set forth in appellants’
specification [reply brief, pages 9-10].
We will sustain the examiner’s rejection of claims 9, 10, 25
and 26 for the reasons argued by the examiner in the answer and
for the reasons discussed above with respect to claim 1.
We now consider the rejection of claims 5, 12, 14, 15, 21,
28, 30 and 31 under 35 U.S.C. § 103(a) as being unpatentable over
the teachings of Dow taken alone. 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 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.
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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
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). 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 and are deemed
to be waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
The examiner has indicated how he finds the claimed
invention to be unpatentable over the teachings of Dow [answer,
pages 16-17]. The examiner’s analysis and explanation are
sufficient to have at least established a prima facie case of
obviousness. Appellants have not specifically responded to this
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rejection. In fact, appellants have indicated that these claims
should be grouped with claim 1 [brief, page 4]. Since the
examiner has established a prima facie case of the obviousness of
claims 5, 12, 14, 15, 21, 28, 30 and 31, and since appellants
have not presented any additional arguments with respect to these
claims, then we sustain the examiner’s rejection of these claims
based upon the rejection and the comments made above with respect
to claim 1.
We now consider the rejection of claims 33, 34 and 38-40
under 35 U.S.C. § 102(b) as being anticipated by the disclosure
of Brichta. The examiner has indicated how he finds the claimed
invention to be fully met by the disclosure of Dow [answer, pages
12-15]. With respect to independent claim 33, appellants argue
that Brichta fails to teach combining values from a plurality of
status registers to form a vector and searching a database to
find at least one corrective measure associated with the vector
[brief, pages 10-12].
The examiner responds that the claim recitation of
“associated with” is much broader than the arguments presented by
appellants. The examiner finds that the term “vector” as used in
claim 33 is broad enough to be met by Brichta. The examiner also
explains how the disclosure of Brichta can be interpreted to meet
the claimed corrective action [answer, pages 25-26].
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Appellants repeat the argument considered above that the
term status registers must be interpreted in a manner consistent
with the described preferred embodiment [reply brief, pages 10-
12].
We will sustain the examiner’s rejection of independent
claim 33 and the rejection of claims 34, 38 and 40 which have not
been separately argued by appellants. We decline to interpret
the claimed invention in the manner proposed by appellants in the
reply brief for reasons discussed above. We agree with the
examiner that the claimed vector can be broadly interpreted in a
manner that is met by Brichta. We also agree with the examiner
that Brichta teaches taking a corrective measure associated with
the vector as explained by the examiner.
With respect to separately argued claims 39, appellants
argue that Brichta fails to teach where the central processing
unit sorts the at least one corrective measure in order of
decreasing desirability [brief, pages 12-13]. The examiner
responds by explaining how the results in Brichta can be
considered to meet the language of claim 39 [answer, pages 26-
28]. Appellants respond that the examiner’s position can be
reached only through an improper use of hindsight [reply brief,
pages 12-13].
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We will sustain the examiner’s rejection of claim 39 for the
reasons argued by the examiner in the answer. We agree with the
examiner that the flow chart shown in Figure 7 of Brichta
provides a series of potential corrective measures in the order
of decreasing desirability. Appellants have failed to
specifically rebut the examiner’s explanation as to why Figure 7
of Brichta meets the claimed invention.
We now consider the rejection of claims 35-37 under 35
U.S.C. § 103(a) as being unpatentable over the teachings of
Brichta taken alone. The examiner has indicated how he finds the
claimed invention to be unpatentable over the teachings of
Brichta [answer, pages 17-18]. The examiner’s analysis and
explanation are sufficient to have at least established a prima
facie case of obviousness. Appellants have not specifically
responded to this rejection. In fact, appellants have indicated
that these claims should be grouped with claim 33 [brief, page
4]. Since the examiner has established a prima facie case of the
obviousness of claims 35-37, and since appellants have not
presented any additional arguments with respect to these claims,
then we sustain the examiner’s rejection of these claims based
upon the rejection and the comments made above with respect to
claim 33.
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Page 14
In summary, we have sustained each of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1-40 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
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Application No. 09/798,287
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Appeal No. 2005-1361
Application No. 09/798,287
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