Ex parte Izquierdo et al.

Board of Patent Appeals and Interferences

Oct 9, 1998

08001091 (B.P.A.I. Oct. 9, 1998)

Application for patent filed January 6, 1993. According1
to the appellants, this application is a continuation of
Application 07/431,659, filed November 3, 1989, now U.S. Patent
5,201,055, issued April 6, 1993.
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAVIER F. IZQUIERDO and
JOHN A. LANDRY
_____________
Appeal No. 96-1152
Application 08/001,0911
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and CARMICHAEL, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
Appeal No. 96-1152
Application 08/001,091
2
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1 to 10, which constitute all the
claims in the application.
Representative claim 1 is reproduced below:
1. A method operable by an electronic device for selecting
one of a plurality of devices each having a data width and which
are addressed using a first number of address lines, wherein each
of the devices is coupled to a data bus having a data width, and
wherein the data width of each device is less than or equal to
the data bus width, the method comprising:
decoding said first number of address lines to produce a
plurality of signals each representing selection of a different
one of the devices;
encoding said plurality of selection representing signals
into a set of addressing signals having an encoded value wherein
each encoded value represents a different one of the devices and
the number of signals in said set is less than said first number;
decoding said encoded set of addressing signals to produce a
signal representing selection of one of the devices; and
selecting the device using said selection signal.

The following reference is relied on by the examiner:
Baker et al. (Baker) 5,119,292 June 2, 1992
(filed July 21, 1989)
Appeal No. 96-1152
Application 08/001,091
An additional prior art rejection under 35 U.S.C. § 1032
based on a reference to Thomas has been withdrawn at page 3 of
the answer.
3
Claims 1 to 10 stand rejected under 35 U.S.C. § 103. As2
evidence of obviousness, the examiner relies upon Baker alone.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the various briefs and answers for
the respective details thereof.
OPINION
At the outset, we note that page 3 of the answer indicates
the examiner relies upon the final rejection and an earlier
Office action for the statement of the rejection of the present
claims on appeal. Page 2 of the final rejection itself
incorporates by reference this prior Office action. This
approach of the examiner violates MPEP § 1208, Topic A, which
permits the examiner to rely upon a single Office action for a
statement of the rejection and instructs the examiner to avoid
multiple references to other Office actions.
Essentially, for the reasons set forth by the appellants in
the various briefs, we reverse the outstanding rejection of all
claims on appeal under 35 U.S.C. § 103. There are various
reasons for this conclusion.
Appeal No. 96-1152
Application 08/001,091
4
We do not agree with the examiner’s view that the preamble
of each independent claim on appeal shows only an area of
interest and that the body must therefore recite the limitations
in the preamble. As expressed at pages 21 and 22 of the
principal Brief on appeal, the body of each independent claim
refers back to language specifically recited in the preamble of
each independent claim to aid in defining certain device and bus
features. As such, the recitations in the preamble cannot be
ignored.
The examiner’s view that the T1 signal is used as a
processor active signal (broadly interpreted) as expressed at the
bottom of page 5 of the Office action mailed on July 30, 1993 is
misplaced. The examiner has provided no evidence beyond
conjecture that this feature of independent claim 10, the only
independent claim that relates to a processor activation signal,
is present in Baker in any manner. Furthermore, we are aware of
no such teaching. Therefore, there would appear to be no basis
in Baker to meet the feature of independent claim 10 on appeal of
"utilizing said processor active signal to decode said encoded
set of signals to produce a second signal representing selection
of a device."
Appeal No. 96-1152
Application 08/001,091
5
The examiner asserts that the initial decoding operation in
each independent claim on appeal is met by the address decoding
logic 796 in Fig. 24. The discussion of this circuit at the
bottom of col. 75, between lines 52 and 58 indicates that address
decoding logic 796 "produces corresponding output values on a
plurality of device-addressed lines. These device-addressed
lines indicate whether the values currently on the data lines
correspond to an address associated with the COM device’s various
address spaces." These various address spaces are discussed in
detail for each of the named lines at col. 76 which, as asserted
by appellants generally indicate that the total effective data
widths of the devices that are referenced in this decoder are
larger than the data widths of the system data bus of the claims
on appeal. Thus, we are in a general agreement with the
appellants general observation at the bottom of page 20 of the
principal Brief on appeal that other address lines must be used
to aid in the address decoding process.
After our study of Baker as well as the positions presented
by both appellants and the examiner, we are in general agreement
with the statement at the top of page 3 of the reply brief, filed
on April 4, 1995:
As claimed, the device having a data
width less than the data width of the bus is
Appeal No. 96-1152
Application 08/001,091
6
not the device selection signal itself, as
apparently asserted by the Examiner, but the
device that is selected by the selection
signal. In Baker, the 8 device selection
signals (which Applicants have assumed are
decoded from the 3-bit signal BCI_SCN[2:0])
are used to select one of a plurality of
devices each having a data width that is much
larger than the data width of the bus
BI_D[31:0]. This is contrary to the
requirements specified in claims 1 and 6 that
"the data width of each device is less than
or equal to the data bus width." Therefore,
Baker does not teach or suggest selection of
a device that has a data width less than or
equal to the data bus width.
BCI_SCN signals outputted from the circuit in Fig. 24 in Baker do
appear to be 3 binary bit positions as expressed at the top four
lines of col. 78 of Baker as they relate to the showing in Fig.
25.
Because we find that the recitations of the various features
in each independent claim 1, 6 and 10 on appeal are much more
specific than those asserted from the teachings and showings the
examiner has found to correspond in Baker and because we find
that the claims would not have been otherwise obvious over those
teachings and showings identified by the examiner in Baker, we
reverse the rejection of claims 1 to 10 under 35 U.S.C. § 103.
REVERSED
Appeal No. 96-1152
Application 08/001,091
7
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )

sd
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