Ex parte Holmes

Board of Patent Appeals and Interferences

Feb 12, 1999

08255544 (B.P.A.I. Feb. 12, 1999)

Application for patent filed June 6, 1994. According to1
appellant, this application is a continuation of Application
07/717,450, filed June 19, 1991, now abandoned.
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journal and (2) is not binding precedent of the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 KEITH HOLMES
____________
Appeal No. 96-3077
Application No. 08/255,5441
____________
ON BRIEF
____________
Before HAIRSTON, JERRY SMITH, and RUGGIERO, Administrative
Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-4, 6-12, 14-20, 22-27, and 29, all of the claims
pending in the present application.
The claimed invention relates to the passing of messages
between objects in an object oriented programming system.
Appeal No. 96-3077
Application No. 08/255,544
2
More specifically, Appellant discloses on page 3 of the
specification that messages are passed through a filter which
detects the type of message being sent and determines the most
appropriate path for transferring the message. As illustrated
in Figs. 2 and 3 of the drawings, if a system message is
detected, the message is transmitted utilizing system message
handling. If a system message is not detected, the message is
transferred using a direct call.
Representative claim 1 is reproduced as follows:
1. A data processing apparatus for executin two or more
computer programs, said data processing apparatus including
memory and processor means, said two or more computer programs
each including a plurality of objects having data and program
code for manipulating said data, said apparatus comprising:
message path means for transferring a message between a
sending and a receiving object, said message having a message
type and message content, said message path means including a
first message transfer means for transferring said message
between objects within the same computer program and a second
message transfer means for transferring said message to an
object in a computer program different from the computer
program of the sending object; and
message path selection logic external to said sending and
receiving objects and responsive to said message type of said
message being transferred by said message path means to select
said first or second message transfer means for transferring
said message between said objects.
The Examiner relied on the following reference:
Appeal No. 96-3077
Application No. 08/255,544
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Gammage, N. et al. 'XMS: A Rendezvous-Based Distributed System
Software Architecture.' IEEE Software, vol. 2, no. 3 (May 2,
1985), pp. 9-19.
Claims 1-4, 6-12, 14-20, 22-27, and 29 are rejected under
35 U.S.C. § 103 as being unpatentable over the Gammage et al
article.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief and Answer for the
respective details thereof.
We will not sustain the rejection of claims 1-4, 6-12,
14-20, 22-27, and 29 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
Appeal No. 96-3077
Application No. 08/255,544
4
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
At the outset we note that the Examiner’s position set
forth in the final rejection is that, while Gammage et al. do
not specifically discuss a message path selection feature, it
would have been obvious to one of ordinary skill that a path
selection based on message type would be necessary for
operation of the system of Gammage et al. Appellant’s
response to the rejection of the claims under 35 U.S.C. § 103
as unpatentable over Gammage et al. argues that any selection
mechanism in Gammage et al. is internal to the sending task
and not external as claimed. We note that Appellant’s claim 1
recites
message path selection logic external to said
sending and receiving objects and responsive
to said message type of said message being
transferred by said message path means to
select said first or second message transfer
means for transferring said message between
said objects.
Appeal No. 96-3077
Application No. 08/255,544
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Appellant argues on pages 11 and 12 of the Brief with respect
to
the Gammage et al. reference
The inclusion of a “locale and node” in the
“remote taskid” provides routing information
within that taskid. Thus the routing is
internal in the sending task and not external
as presently claimed.
In response to this argument by Appellant, the Examiner
(Answer, pages 4 and 5) initially points to statements in
Appellant’s Brief and in Gammage et al. relating to
transparency between communicating tasks in the system
described in Gammage et al. In the Examiner’s view, the
Appellant’s admission on page 9, lines 1-5 of the Brief that
each task in Gammage et al. need not know the actual location
of other tasks with which it wishes to communicate supports
the Examiner’s position that no internal message path
selection is present in Gammage et al.
After careful review, however, we are of the opinion that
the Examiner has misconstrued Appellant’s statements on page 9
of the Brief and the Gammage et al. reference. We note the
following statement from page 18, col. 1, lines 6-12 of
Gammage et al. referenced by the Examiner
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Application No. 08/255,544
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Any task in the cluster can potentially
communicate with any other task in the
cluster without needing to know precisely
where the other task is executing, but only
whether it is executing in the same or in
a different program.
In our view, this passage indicates that, while the sending
task in Gammage et al. does not require the exact location of
a remote task to be invoked, such sending task requires
knowledge as to whether, in the terminology used by Gammage et
al., a local rendezvous or a remote rendezvous is required.
The discussion of local and remote rendezvous on pages 13-15
of Gammage et al. indicates that a remote task identification
is required for the sending task to invoke a remote
rendezvous. The inclusion of such remote task identification
is effectively an internal message path selection included in
the sending task definition.
The Examiner further argues (Answer, page 5) that the
inclusion of “target locale and node” information in the
identification of message type in Gammmage et al. is not
precluded by the use of the transitional phrase “comprising”
in Appellant’s claim 1. On this point, while the Examiner’s
statement regarding preclusion is correct, we agree with
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Application No. 08/255,544
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Appellant that the inclusion of locale and node information in
the identification information of the remote task in Gammage
et al indicates that any message path selection must
necessarily be internal to the sending task.
In further response to Appellant’s arguments, the
Examiner refers to a “name server” discussed beginning at page
15, line 35 of Gammage et al. as providing a teaching of
message routing through an “external” task (Answer, page 5).
However, on review of this passage of Gammage et al., we are
of the view that, while such “name server” task may be
external to the sending and receiving tasks, no message path
selection is taking place. The name server described by
Gammage et al. on page 15 acts as a repository of remote task
identification information which can be accessed by a remote
task preparing to be invoked and by a sending task requiring
such remote task identification information. We can find no
message path selection performed by such name server in
Gammage et al., since, as discussed previously, a remote
rendezvous will have been internally selected by the coding of
a remote task identification into the sending task definition.
Appeal No. 96-3077
Application No. 08/255,544
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With respect to independent claims 26 and 27, Appellant
contends that the internal routing performed by the sending
task in Gammage et al. cannot meet the claimed feature of the
detection of message type independent of the first and second
objects. Appellant’s claim 26 recites
detecting, independent of said first
or second objects, the message type of
said generated message; and
transferring said message between
objects via one of said plurality of
message paths in response to said
detected message type.
In regard to independent claim 29, Appellant reiterates the
contention that Gammage et al. provides no teaching of the
claimed external testing feature. Appellant’s claim 29
recites
testing the message type to determine a
destination object for said message type of
message routing, said testing being performed
external to the generating object;
In response to the Appellant’s arguments with regard to
claims 26, 27, and 29, the Examiner argues (Answer, page 6)
Applicant’s arguments regarding claims 26
and 29 (pages 14-15 of the Brief) are not
persuasive, because if as admitted by Appellant
“the routing of Gammage et al is performed by
sending task and is, therefore, not ‘independent
Appeal No. 96-3077
Application No. 08/255,544
9
of’ such task,” such a distinction is merely
the separating into two tasks/devices a process
which was previously performed as integral to
another process/device. Such a distinction
is not patentably distinguishing, since it has
held that constructing a formerly integral
structure in various elements involves only
routine skill in the art. Nerwin v. Erlichman,
168 USPQ 177, 179.
We have reviewed the Nerwin decision cited by the
Examiner and find that it does not support the Examiner’s
position. The factual situation in Nerwin involved the
question of whether an integral structure is precluded from
being separated and considered as separate elements. To the
extent there is any analogy to the internal selecting task in
Gammage et al. as an integral structure, the claimed invention
involves more than merely separating such task into separate
tasks. The differences between the claimed invention and
Gammage et al. lie in not merely the separating of an internal
message path selection task into separate tasks, but rather
the use of an external path selection feature to perform
message path selection external to and independently of the
message sending and receiving objects. In view of the
above, we agree with Appellant that the Examiner has not
Appeal No. 96-3077
Application No. 08/255,544
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established a prima facie case of obviousness. In particular,
we find that the Examiner has not established that external
and object independent message path selection according to
message type is taught or suggested in the prior art.
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference, common knowledge or capable of
unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966).
Appeal No. 96-3077
Application No. 08/255,544
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In summary, we have not sustained any of the Examiner’s
rejections of the claims on appeal. Therefore, the decision
of the Examiner rejecting claims 1-4, 6-12, 14-20, 22-27, and
29 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
lp
Appeal No. 96-3077
Application No. 08/255,544
12
MARK S. WALKER
IBM CORPORATION
INTELLECTUAL PROPERTY LAW, 932, ZIP 4054
11400 BURNET ROAD
AUSTIN, TX 78758
Leticia
Appeal No. 96-3077
Application No. 08/255,544
APJ RUGGIERO
APJ HAIRSTON
APJ JERRY SMITH
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): 103
Prepared: September 27, 1999
Draft Final
3 MEM. CONF. Y N
OB/HD GAU 2307
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT