Ex Parte Gulick

Board of Patent Appeals and Interferences

Dec 27, 2004

09544858 (B.P.A.I. Dec. 27, 2004)

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for publication and is not binding precedent of the Board.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 DALE E. GULICK
____________
Appeal No. 2004-1596
Application No. 09/544,858
____________
ON BRIEF
____________
Before DIXON, BARRY and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-16, 18, 19, 23-25 and 27-39. Claims 17,
20-22 and 26 have been canceled.
We reverse and enter a new rejection pursuant to 37 CFR
§ 41.50(b).
BACKGROUND
Appellant’s invention is directed to a method and apparatus
for extending legacy systems to allow additional transactions
over a computer bus in spite of the limitations for expansion or
improvement in such systems. As depicted in Figure 4, the timing
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diagram for a legacy Low Pin Count (LPC) bus transaction on a
single protocol system includes a plurality of different START
signals, of which only the last signal 350A is used by the target
device (specification, page 12). According to Appellant’s
invention, depicted in Figure 6, the value of the captured START
signal 650A indicates that START signal 350A and the following
signal correspond to standard LPC bus transaction (id.). Thus,
any device addressed by the standard LPC bus transaction ignores
the extended LPC transactions.
Representative independent claim 1 is reproduced below:
1. A method for performing transactions over a bus,
comprising:
transmitting a first signal;
transmitting a second signal indicating a transaction
request encoded according to at least one of a first protocol and
a second protocol;
determining that the first protocol is used by a first
device to decode the transaction using the first signal and the
second signal; and
determining that the second protocol is used by a second
device to decode the transaction using the second signal, the
second device being adapted to ignore the first signal.

The Examiner relies on the following references in rejecting
the claims:
Kowalski 5,420,412 May 30, 1995
Hewitt 5,898,886 Apr. 27, 1999
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In addition, the examiner relied upon Appellant’s Admitted
Prior Art (specification, pages 5, 11 and 12) relating to a
method for performing transactions over a bus. Appellant’s
Admitted Prior Art (AAPA).
Claims 1-16, 23-25, 27-34 and 37-39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over AAPA and Kowalski.
Claims 18, 19, 35 and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA and Kowalski and further
in view of Hewitt.
We make reference to the answer (Paper No. 19, mailed
January 29, 2004) for the Examiner’s reasoning, and to the appeal
brief (Paper No. 18, filed December 19, 2003) for Appellant’s
arguments thereagainst.
OPINION
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). The conclusion that the claimed
subject matter is obvious must be supported by evidence, as shown
by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings
of the references to arrive at the claimed invention. See In re
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Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Furthermore, the Examiner must produce a factual basis supported
by teaching in a prior art reference or shown to be common
knowledge of unquestionable demonstration, consistent with the
holding in Graham v. John Deere Co., 383 U.S. 1 (1966). Such
evidence is required in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268,
271-72 (CCPA 1966).
With respect to the rejection of claims 1-16, 23-25, 27-34
and 37-39 over AAPA and Kowalski, Appellant acknowledges the
Examiner’s characterization of the protocol determined by the
selection circuit on the PC card of Kowalski using an initial
phase dialog as the first signal and the decoded subsequent data
as the second signal (brief, page 10). However, Appellant argues
that modifying any features of the disclosed card-reader system
so that it may be incorporated in a legacy computer system, as
proposed by the examiner, is not supported by any motivation or
suggestion in the prior art (brief, page 11). Appellant asserts
that the combination would not have resulted in the claimed
ignoring the first signal and decoding the second signal since
Kowalski requires that the third signal read the initial phase
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dialog (the first signal) in order to decode the subsequent data
(the second signal) (brief, page 10).
In response to Appellant’s arguments, the Examiner asserts
that the PC card of Kowalski decodes the initial phase dialogue
as a first signal prior to converting or decoding the transaction
request (answer, page 12). The Examiner further asserts that the
third device of AAPA is configured to ignore the first signal and
to decode the third signal while the second device of AAPA reads
the initial phase dialogue of Kowalski as the first signal in
order to decode the second signal (answer, page 13). The
examiner further argues that the combination of the protocol
selection of Kowalski with the second device enables its use with
a first device in a computer system operating according to
different protocols (answer, page 15).
We remain unconvinced by the Examiner’s argument that the
combination of AAPA and Kowalski is proper and obvious such that
one of ordinary skill in the art would be able to use the cards
(second devices) with the readers (first devices) according to
different protocols (answer, page 15). Notwithstanding
Kowalski’s recognition of the problem with inserting cards in
readers operating according to different protocols (col. 2, lines
43-46), the Examiner has not clearly set forth how combining the
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PC-card of Kowalski with the LPC bus protocol of AAPA is
suggested in the portions of Kowalski, as pointed to by the
Examiner. Kowalski, as specified by Appellant (brief, page 9-
11), requires using a simplified protocol performable by all
reader types (col. 2, lines 60 through col. 3, line 2) which
cannot be ignored by any of the devices. This “initial phase
dialogue,” which is characterized by the examiner as decoding the
first signal, is actually produced from electrical signals which
can be produced in all protocols and not likely to be ignored by
the reader as it determines the future exchange protocols. Thus,
we agree with Appellant that such combination is made only in
terms of the problems and solutions disclosed by Appellant since
the prior art disclosure, at least, teaches away from such
combination (brief, page 11).

Thus, the evidence provided by the Examiner would have
failed to motivate the skilled artisan to combine the AAPA with
Kowalski to provide for the second device to ignore the first
signal and to decode the second signal. Kowalski, in fact,
requires decoding the first signal by all devices before other
signals are processed. Whereas, our reviewing court requires
that particular findings must be made as to the reason the
skilled artisan, with no knowledge of the claimed invention,
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would have selected and modified the prior art teachings for
combination in the manner claimed. In re Kotzab, 217 F.3d 1365,
1369-70, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In view of our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness with
respect to claim 1, as well as claims 9, 23 and 27, which recite
similar features. Accordingly, we do not sustain the 35 U.S.C.
§ 103 rejection of claims 1-16, 23-25, 27-34 and 37-39 over AAPA
and Kowalski.
With respect to the rejection of the remaining claims, the
Examiner further relies on Hewitt for disclosing multimedia
devices in a computer system in connection with a bus interface
logic including at least one storage location (answer, page 10).
However, there is no additional disclosure in Hewitt that
overcomes the deficiencies of the combination of AAPA and
Kowalski as discussed above with respect to claim 1. Therefore,
the 35 U.S.C. § 103 rejection of claims 18, 19, 35 and 36 cannot
be sustained.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-4, 6-25, 27-46 and 48-63 under 35 U.S.C. § 103
is reversed.
A new rejection of claims 1-4, 6-25, 27-46 and 48-63 under
35 U.S.C. § 112, first paragraph, has been added pursuant to
provisions of 37 CFR § 41.50(b).
The following is a quotation of the first paragraph of 35
U.S.C. § 112:
The specification shall contain a written description
of the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make
and use the same and shall set forth the best mode
contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-25, 27-46 and 48-63 are rejected under
35 U.S.C. § 112, first paragraph, because the specification,
while being enabling for a certain transactions being ignored
(pages 13-15), does not reasonably provide enablement for which
signals particularly represent the first and the second signals
wherein the first signal is ignored by the second device. The
specification does not enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to
make and use the invention commensurate in scope with these
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claims. The claimed term “to ignore the first signal” in view of
the disclosed embodiments, as depicted in Figures 6 and 7, is not
clearly disclosed since the figures do not clearly define the
relationship between the first and the second signal, nor
identify which two signals they particularly refer to. Although
Appellant attempts to relate the claimed language to the
disclosure and figures 6 and 7 in the “Summary of the Invention”
section (brief, pages 3-6), there is no description of the
signals that correspond to those decoded by the first and the
second devices or ignored by the second device.
As explained above, the disclosure lacks an enabling
description of the signals decoded by the first and the second
protocol and how it is determined that the second protocol is
used by a second device wherein the second device is adapted to
ignore the first signal. Thus, claims 1-4, 6-25, 27-46 and 48-63
are rejected under the first paragraph of 35 U.S.C. § 112, for
the reasons explained.
In addition to reversing the Examiner’s decision rejecting
the claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 41.50(b) (effective September 13, 2004, 69
Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground
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of rejection pursuant to this paragraph shall not be considered
final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .37
CFR § 1.196(b) provides that “[a] new ground of rejection shall
not be considered final for purposes of judicial review.”
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 41.50(b)
JOSEPH L. DIXON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2004-1596
Application No. 09/544,858
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