Ex parte HUON et al.

Board of Patent Appeals and Interferences

Sep 25, 1997

08066638 (B.P.A.I. Sep. 25, 1997)

Application for patent filed May 25, 1993, which is a continuation of1
Application 07/491,901, filed March 12, 1990, now abandoned.
1
Paper No. 27
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte PIERRE HUON AND
RENE GLAISE
______________
Appeal No. 96-0033
Application 08/066,6381
_______________
ON BRIEF
_______________
Before THOMAS, MARTIN and LEE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants have appealed to the Board from the
examiner’s final rejection of claims 1 to 9, which constitute
all the claims in the application.
Appeal No. 96-0033
Application 08/066,638
2
Representative independent claim 1 is reproduced below:
1. A circuit for controlling data transfers between a first
device (1) and a second device (2) which operate at different
data rates, the first device providing data on an output bus at a
first rate together with strobe signals indicating data is
available to be transferred, the second device receiving data at
a second rate which is the rate of clock signals provided by the
second device, comprising:
at least R buffer registers (10, 12; 210) for receiving data
from the first device, R being an integer number equal to T+(T-1)
x (B-1), where T is a maximum number of data entities that can be
provided by the first device in a period of a clock signal and B
is a number of consecutive periods during which the first device
can provide a maximum number of data entities,
counting means (28;222) for generating R x (R+1) distinct
values in response to the strobe signals applied thereto;
decoding means coupled to the counting means, for generating
signals representative of the values generated by the counting
means and active loading signals used to cause the data from
the first device that are available at each strobe signal to be
loaded in a register selected among the buffer registers (R1 to
Rr) in a fixed sequence;
gating means (16, 20, 216), coupled to the buffer registers,
for selectively gating the data from the first device into the
buffer registers in response to said active loading signals;
storing means (44) responsive to the strobe signals, the
clock signals provided by the second device and the signals
representative of the values generated by the counting means,
for keeping track of those buffer registers which contain data
from the first device and of the sequence in which the buffer
registers were loaded; and
selection means (40, 34, 240, 234) responsive to signals
outputted from said storing means and to the signals
representative of the values generated by the counting means
Appeal No. 96-0033
Application 08/066,638
3
for selectively gating the data from the buffer registers to the
second device, in such a way that the data are provided to the
second device in the same sequence as they were provided by the
first device.
The following references are relied on by the examiner:
Meinke 4,193,123 Mar. 11, 1980
Trost 4,288,860 Sep. 8, 1981
Claims 1 to 9 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Trost alone
as to claims 1 to 5, 8 and 9, with the addition of Meinke as to
claims 6 and 7.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
OPINION
For all the reasons well expressed by the examiner in the
answer, and for the additional amplifying reasons presented here,
we will sustain the prior art rejection of claims 1 to 5, 8 and
9. However, we reverse the rejection of dependent claims 6
and 7.
Appeal No. 96-0033
Application 08/066,638
4
In addition to a detailed correspondence of the structure of
representative independent claim 1 on appeal in the statement of
the rejection in the answer, the examiner has addressed each of
the arguments presented by appellants beginning at page 8 of the
brief. We add our own views as to these arguments.
At page 9 of the brief, appellants assert that Trost does
not show the claimed decoding means. Appellants’ position
questions the ability of the decoding means claimed to be met in
the context of the position that there are no “strobe in” signals
of the argued decoding means in Trost. This position is
misplaced since the corresponding clock signal 41 exiting the
dynamic storage means 10 in Figure 1 in Trost corresponds to the
claimed strobe signal.
At the same time as recognizing at the bottom of page 8 of
appellants’ brief that the examiner has found correspondence
in Trost for all the subject matter of the appealed claims,
appellants assert at the bottom of page 9 of the brief that the
examiner’s identification of the various columns and portions of
figures in the statement of the rejection is insufficient. The
examiner’s approach is conventional in setting forth the state-
ment of the rejection and appellants’ comments at the bottom of
page 9 and the top of page 10 of the brief are misplaced since
Appeal No. 96-0033
Application 08/066,638
5
they fail to consider a reasonable association of the teachings
of the reference to the scope of the claims on appeal. As
pointed out by the examiner at pages 8 and 9 of the answer,
such a presentation belies the prosecution history of this
application. In any event, appellants’ further assertion that
the examiner has, by this approach, not met the rationale of
In re Donaldson Co., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir.
1994), is also misplaced. The examiner’s basic position asserts
either corresponding structural elements or the structural
equivalence of the claimed elements rejected, which approach
shifts the burden to appellants to detail what portions of the
specification disclosed for those claims utilizing the means-
plus-function format of 35 U.S.C. § 112, paragraph six, are not
in the reference. This burden appellants have not met.
Appellants’ assertion at the bottom of page 10 and on top of
page 11 of the brief is also misplaced in that it is immaterial
to the scope and subject matter of the claims on appeal whether
or not the reference requires an external clock to control the
data rate transfers. The clocking control circuit 24 in Figure 1
of Trost operates in conjunction with the clocking signal
provided on line 41 from the dynamic storage device 10, as well
as the clock signal provided from the requestor 11 on line 40.
Appeal No. 96-0033
Application 08/066,638
6
Furthermore, as said by the examiner at page 10 of the answer,
there is nothing in appellants’ claims to preclude that a first
rate from a first device may be variable, as is taught in Trost,
or to preclude that this rate may be externally provided to the
overall device.
Appellants’ positions presented between pages 11 and 13 are
also non-persuasive since they appear to argue the disclosed
rather than the claimed invention. As to appellants’ position
at page 13 of the brief, there is no claimed burst mode of the
first device recited in any independent claim on appeal. There
is only an implication or an inference that may be derived from
the language of the register means clause that something other
than a maximum number of data entities may be transferred within
consecutive clock periods at other times. Even as disclosed,
appellants’ memory device 1 does operate in at least two speeds,
a normal speed and a burst mode speed. As set forth at columns 1
and 2 of Trost, the dynamic memory of this reference embodied as
element 10 contains the capability of operating at two speeds, a
fast and a slow speed, even as depicted in the Figure 7 and
discussed at column 5, lines 54 to 59. A CCD memory device of
Trost has the capability of operating in an internal clock sense
between minimum and maximum data clock rates. As such, the fact
Appeal No. 96-0033
Application 08/066,638
7
that Trost also teaches a variable clocking rate for the data
transfers between devices 10 and 11 does not belittle the merits
of the rejection as applied to the claimed invention.
In the context of asserting that independent claim 1 is
patentable because of the language recited in the “at least R
buffer registers” clause as quoted at page 14 of the brief, the
position advocated is that an optimum number of registers is
therefore available for use without any overrun or superfluous
number of registers. As pointed out by the examiner at page 11
of the answer, the disclosure is consistent with the argument
that a minimum number of registers is determined according to the
relationship set forth in the claim and in accordance with the
“at least” language of the above-noted clause. Appellants’
arguments as to this clause of claim 1 on appeal do not assert
that Trost does not teach or suggest to the artisan within 35
U.S.C. § 103 the subject matter of this clause. As noted again
by the examiner at page 11 of the answer, the examiner has
asserted that there are portions specifically identified in Trost
to meet the language of that clause.
As to dependent claims 2 to 5, the positions set forth by
appellants at page 15 of the brief indicate that they have not
argued the particulars of these respective claims in any manner
Appeal No. 96-0033
Application 08/066,638
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but have asserted only a general argument of patentability, which
is unacceptable as an argumentative approach within 37 CFR
§ 1.192.
In a similar manner, the subject matter of independent
claims 8 and 9 is considered to be a broader recitation of the
subject matter directly corresponding to independent claim 1 on
appeal. More specifically, the above-noted “at least R buffer
registers” clause of claim 1 on appeal is only recited in these
claims 8 and 9 as “for receiving data from the first device, R
being an integer number greater than 1.” Similarly, the counting
means clause of independent claim 1 is only recited in inde-
pendent claims 8 and 9 as “generating a predetermined number
of distinct values in response to the strobe signals applied
thereto.” In accordance with the examiner’s reasoning, these
claims are broader than the corresponding recitation in
independent claim 1 on appeal. Therefore, the teachings as
correlated by the examiner to claim 1 obviously would have been
even more applicable to the artisan to claims 8 and 9.
We part company with the examiner’s rejection of dependent
claims 6 and 7 on appeal within 35 U.S.C. § 103 in light of the
collective teachings of Trost and Meinke. Assuming for the sake
of argument that it would have been proper within this statutory
Appeal No. 96-0033
Application 08/066,638
9
provision for the artisan to have combined the teachings of these
two references, the subject matter of these two dependent claims
6 and 7 would not have been met. The respective overrun
detection means and validation means in these claims 6 and 7
require specific relationships between the latches in these
claims to other circuit elements, none of which has been detailed
by the examiner as being correlated to any of the collective
teachings and suggestions between the two references. As such,
the examiner has failed to set forth a prima facie case of
obvious-ness of the specific subject matter set forth in these
two claims even though the examiner appears to have set forth a
valid basis between the two references only for the concept of
both claims, that is, the overrun detection concept, as well as
the validation concept set forth in respective claims 6 and 7.
In view of the foregoing, the decision of the examiner is
affirmed as to the decision to reject claims 1 to 5, 8 and 9
within 35 U.S.C. § 103, but is reversed as to the examiner’s
decision to reject dependent claims 6 and 7 under this statutory
provision. Therefore, the decision of the examiner is affirmed-
in-part.
Appeal No. 96-0033
Application 08/066,638
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
James D. Thomas )
Administrative Patent Judge )
)
)
)
John C. Martin ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jameson Lee )
Administrative Patent Judge )

Appeal No. 96-0033
Application 08/066,638
11
Joscelyn C. Cockburn
972/B205, IBM Corporation
P. O. Box 12195
Research Triangle Park, NC 27709
JDT/cam