Ex Parte KAO

Board of Patent Appeals and Interferences

Jun 20, 2001

08418797 (B.P.A.I. Jun. 20, 2001)

1
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written for publication and is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RUEY KAO
_____________
Appeal No. 1999-2295
Application No. 08/418,797
______________
HEARD: June 13, 2001
_______________
Before KRASS, RUGGIERO, and BLANKENSHIP, Administrative Patent
Judges
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-6, 9-14, and 17-22, which are the only claims remaining
in the application.
The claimed invention relates to a service module having a
buffer queue which includes a plurality of buffers linked
together using next pointers. Coupled to the buffer queue are a
Appeal No. 1999-2295
Application No. 08/418,797
2
first processor including a first cache configured to store a
head pointer of the buffer queue and a second processor including
a second cache configured to store a tail pointer of the buffer
queue. Appellant asserts at pages 8 and 9 of the specification
that the caches are made independent of each other, thereby
eliminating the need for a shared memory for storing head and
tail pointers.
Claim 1 is illustrative of the invention and reads as
follows:
1. A service module, comprising:
a buffer queue that stores a data queue, the
buffer queue comprising a plurality of buffers being
linked to one another as a linked list using next
pointers;
a first processor including a first cache coupled
to the buffer queue; and
a second processor including a second cache
coupled to the buffer queue,
wherein the first processor is configured to store
a head pointer of the buffer queue in the first cache
and the second processor is configured to store a tail
pointer of the buffer queue in the second cache, the
first cache being independent of the second cache.
Appeal No. 1999-2295
Application No. 08/418,797
1 The Appeal Brief was filed December 23, 1998. In response to the
Examiner’s Answer dated March 15, 1999, a Reply Brief was filed May 17, 1999,
which was acknowledged and entered by the Examiner without further comment as
indicated in the communication dated May 24, 1999.
3
The Examiner relies on the following prior art:
Walp 4,894,797 Jan. 16, 1990
Chao 5,278,828 Jan. 11, 1994
Koufopavlou et al. (Koufopavlou) 5,493,652 Feb. 20, 1996
(filed Apr. 29, 1994)
Claims 1-6, 9-14, and 17-22 stand finally rejected under
35 U.S.C. § 103 as being unpatentable over Koufopavlou in view of
Chao and Walp.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, the arguments in support
of the rejection and the evidence of obviousness relied upon by
the Examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
Appeal No. 1999-2295
Application No. 08/418,797
4
Appellant’s arguments set forth in the Briefs along with the
Examiner’s rationale in support of the rejection 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 and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention set forth in claims
1-6, 9-14, and 17-22. Accordingly, we reverse.
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 deter-
minations 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
Appeal No. 1999-2295
Application No. 08/418,797
5
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.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 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).
With respect to independent claims 1, 3, 6, 14, and 19, the
Examiner, as the basis for the obviousness rejection, proposes to
modify the memory management system disclosure of Koufopavlou.
As recognized by the Examiner, Koufopavlou, while providing a
linked list buffer queue and a pointer memory which stores head
and tail pointers, lacks a disclosure of first and second
independent head and tail pointer memories which are accessed by
first and second independent processors as in the appealed
claims. To address this deficiency, the Examiner turns to Chao
and Walp for the teachings of independent head and tail pointer
Appeal No. 1999-2295
Application No. 08/418,797
6
memories and independent processor accessing, respectively.
According to the Examiner (Answer, pages 6 and 7), the skilled
artisan would have been motivated and found it obvious to modify
Koufopavlou with Chao and Walp to achieve better control of
Koufopavlou’s memory management system.
In response, Appellant asserts a lack of establishment by
the Examiner of a prima facie case of obviousness. Appellant
points out (Brief, page 7; Reply Brief, page 2) that the Examiner
has relied on the Figure 9 embodiment of Chao, which utilizes
only a single processor, for a teaching of independent head and
tail pointer memories. Appellant contends, however, that the
Examiner has disregarded the disclosure of the embodiment
described with regard to Figure 11 of Chao which utilizes two
independent processors. In Appellant’s view, the teaching
provided to the skilled artisan by the Figure 11 embodiment of
Chao is that, contrary to the appealed claims, when plural
independent processor are utilized in a buffer queue system, the
concept of separate head and tail pointer memories is abandoned
in favor of a priority sequencer arrangement.
Appeal No. 1999-2295
Application No. 08/418,797
7
After careful review of the applied prior art references in
light of the arguments of record, we are in agreement with
Appellant’s position as stated in the Briefs. While it is proper
for an Examiner to consider, not only the specific teachings of a
reference, but inferences a skilled artisan might draw from them,
it is equally important that the teachings of prior art
references be considered in their entirety. See In re Preda, 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968); W.L. Gore &
Associates, Inc. V. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ
303, 311 (Fed. Cir. 1983), cert denied, 469 U.S. 851 (1984).
In particular, in order for us to accept the Examiner’s
conclusions in the present factual situation, we would have to
improperly selectively ignore significant portions of the
disclosure of the Chao reference. In our view, the skilled
artisan, considering the collective teachings of the Koufopavlou,
Chao, and Walp references, would be led away from the approach as
set forth in Appellant’s claims, i.e. the use of independent
processors to access independent tail and pointer memories of a
buffer queue. We reach this conclusion in view of the express
disclosure of the Figure 11 embodiment in Chao. As asserted by
Appeal No. 1999-2295
Application No. 08/418,797
8
Appellant, when Chao chooses to introduce plural processors into
the disclosed memory management system, the separate head and
pointer memories described in Chao’s previous embodiments are
abandoned and a priority sequencer arrangement is used instead.
In conclusion, we are left to speculate why one of ordinary
skill would have found it obvious to modify the applied prior art
to make the combination suggested by the Examiner. The only
reason we can discern is improper hindsight reconstruction of
Appellants’ claimed invention. In order for us to sustain the
Examiner’s rejection under 35 U.S.C. § 103, we would need to
resort to speculation or unfounded assumptions or rationales to
supply deficiencies in the factual basis of the rejection before
us. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968), rehearing denied, 390
U.S. 1000 (1968). Since we are of the view that the prior art
applied by the Examiner does not support the rejection, we do not
sustain the obviousness rejection of independent claims 1, 3, 6,
14, and 19, nor of claims 2, 4, 5, 9-13, 17, 18, and 20-22
dependent thereon.
Appeal No. 1999-2295
Application No. 08/418,797
9
In conclusion, we have not sustained the Examiner’s
rejection of any of the claims on appeal under 35 U.S.C. § 103.
Accordingly, the decision of the Examiner rejecting claims 1-6,
9-14, and 17-22 is reversed.
REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
jfr/vsh
Appeal No. 1999-2295
Application No. 08/418,797
10
BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN, LLP
12400 WILSHIRE BOULEVARD
LOS ANGELES, CA 90025